TORO | Decision 2783325 | Trademarkers LLC

TORO | Decision 2783325

Date Published: Sep 24, 2017

OPPOSITION No B 2 783 325

Grupo Osborne S.A., Calle Fernán Caballero, 7, 11500 El Puerto de Santa María (Cádiz), Spain (opponent), represented by Aguilar I Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative)

a g a i n s t

Paul H.J.Roncken, Fügnerovo nám. 3, 12000 Prague 2, Czech Republic (applicant), represented by Vladimíra Pajerová, Fügnerovo náměstí 3, 120 00 Prague, Czech Republic (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 783 325 is partially upheld, namely for the following contested goods:

Class 8: Food preparation implements, kitchen knives and cutlery; Hygienic and beauty implements for humans and animals; Hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance; Edged and blunt weapons; Lifting Tools; Working knives; Harpoons for fishing; Knife bags; Side arms, other than firearms; Rakes; Rakes [hand tools]; Golf course rakes; Lawn rakes [hand-operated ones only]; Lawn rakes [hand-operated tools]; Bush hooks [hand tools]; Hoop cutters [hand tools]; Scythe rings; Scythes (Hand-operated -); Sickles; Picks [hand tools]; Trimmers [hand operated tools]; Hedge cutters [hand-operated tools]; Trowels [gardening]; Shovels [hand tools]; Mattocks; Weeding forks [hand tools]; Fertilizer scoops; Weeding tools [hand operated]; Apparatus for destroying plant parasites, hand-operated; Fruit pickers [hand tools]; Carving knives; Non-electric ice crushers; Filleting knives; Disposable tableware [cutlery] made of plastics; Japanese chopping kitchen knives; Cutlery; Japanese style earthenware mortars [suribachi]; Canteens of cutlery; Canteens of cutlery made of precious metal; Sugar tongs; Ceramic knives; Bread tongs; Barbecue tongs; Ice tongs; Meat tongs; Vegetable tongs; Boxes adapted for cutlery; Bread slicers [hand-operated]; Bagel slicers [knives]; French fry cutters; Pizza slicers; Pizza cutters, non-electric; Hand operated food dicers; Cheese slicers; Spoons for tea; Pasta cutters (Hand operated -); Egg slicers; Egg slicers, non-electric; Vegetable choppers; Vegetable slicers (Hand-operated -); Mandolins for slicing vegetables; Cheese slicers [hand-operated]; Hand-operated slicers; Chef knives; Kitchen knives; Kitchen knives (Non-electric -); Paring knives; Fish slicing kitchen knives; Thin-bladed kitchen knives; Scissors for kitchen use; Sugar scoops; Bulk sugar scoops; Fish scoops; Bulk rice scoops; Nutcrackers; Nutcrackers of precious metal; Nutcrackers not of precious metal; Ladles for wine; Spoons made of precious metal; Pasta serving forks; Ladles [hand tools]; Rice scoops; Non-electric garlic cutters; Cheese slicers, non-electric; Non-electric mincers; Can openers, non-electric; Non-electric pasta makers for domestic use; Non-electric garlic peelers; Household knives; Bread knives [hand operated]; Grapefruit trimmers; Peeling knives; Fruit knives; Cake cutters; Fish slices; Cherry pitters; Strawberry hullers; Can tab puller; Oyster openers; Fruit muddlers; Butter curlers; Pestles for pounding; Table forks; Silver plate [knives, forks and spoons]; Cutlery for use by babies; Cutlery for use by children; Cutlery of precious metals; Carving knives (Hand operated -) for household use; Hand-operated tools for shaving ice; Hand operated tool for making shaved ice; Implements (Hand operated -) for cracking lobsters; Mincing knives [hand tools]; Hand-operated choppers; Hand-operated food processors; Hand-operated vegetable shredders; Fishing knives; Meat choppers [cleavers]; Vegetable choppers (Hand-operated -); Serving tongs; Serving spoons; Serving ladles; Serving knives; Serving forks; Potato peelers [knives]; Potato peelers [hand implements]; Zesters; Scaling knives; Non-electric fruit peelers; Fish scalers; Non-electric vegetable peelers; Spatulas [hand tools]; Vegetable peelers [hand operated knives]; Choppers [knives]; Vegetable corers (Hand-operated -); Vegetable corers; Apple corers; Forks made of precious metal; Barbecue forks; Forks and spoons; Carving forks; Forks; Souvenir collector spoons; Implements for decanting liquids [hand tools]; Sterling silver table forks; Stainless steel table forks; Table cutlery [knives, forks and spoons]; Sterling silver table knives; Stainless steel table knives; Table knives; Sterling silver table spoons; Stainless steel table spoons; Vegetable spiralizer; Manicure and pedicure tools; Body art tools; Hair cutting and removal implements; Hair styling appliances; Scissor holders; Electric steam irons; Electric irons; Electric hair straightening irons; Electric irons for styling hair; Eyelash separators; Temperature controlled electric flat irons; Eyelash curlers; Pedicure implements; Scissors; Shear blades; Shears [hand operated tools]; Cuticle scissors; Trimming knives; Tweezers; Farriers' knives; Sprays [hand-operated tools]; Hand-pumped sprayers; Manual clippers; Clippers for personal use [electric and non electric]; Stripping knives; Electric fingernail polishers; Electric animal nail grinders; Electric pedicure sets; Needle files; Cuticle tweezers; Nail clippers; Nail clippers, electric or non-electric; Nail nippers [hand tools]; Nail nippers; Nail polishers (Non-electric -); Fingernail polishers, electric or non-electric; Nail buffers for use in manicure; Nail skin treatment trimmers; Non-electric fingernail polishers; Manicure implements; Nail scissors; Emery files; Nail files, electric; Nail files, non-electric; Cases for manicure instruments; Battery-powered animal nail grinders; Callus cutters; Manicure sets; Emery boards; Manicure sets, electric; Pedicure sets; Scissors for children; Pocket shears; Pocket knives with multi-purpose attachments; Tin openers (Hand-operated -); Tool belts [holders]; Spool unwinders [hand-operated tools]; Thread snips; Scissors for household use; Paper shears; Palette knives; Stirrers [hand tools]; Needle-threaders; Sauna ladles; Non-electric soldering irons; Knives; Knives for hobby use; Knives made of precious metal; Instruments for punching tickets; Wick trimmers [scissors]; Fishing line cutters; String tensioning device for rackets [hand tools]; Priming irons [hand tools].

Class 18: Umbrellas and parasols; Saddlery, whips and animal apparel; Walking staffs; Luggage, bags, wallets and other carriers; Leather cloth; Goldbeaters' skin; Imitation leather; Cattle skins; Imitation leather sold in bulk; Chamois leather, other than for cleaning purposes; Kid; Sheets of leather for use in manufacture; Studs of leather; Industrial packaging containers of leather; Boxes made of leather; Trimmings of leather for furniture; Leather straps; Girths of leather; Furs sold in bulk; Butts [parts of hides]; Valves of leather; Curried skins; Leather and imitations of leather; Leather for furniture; Leather for shoes; Leather for harnesses; Leather sold in bulk; Leatherboard; Sheets of imitation leather for use in manufacture; Umbrellas; Golf umbrellas; Umbrellas for children; Japanese oiled-paper umbrellas (janome-gasa); Japanese paper umbrellas (karakasa); Covers for parasols; Rainproof parasols; Umbrella covers; Beach umbrellas [beach parasols]; Bags for umbrellas; Telescopic umbrellas; Parasols; Patio umbrellas; Combination walking sticks and umbrellas; Leather wallets; Book bags; Briefcases and attache cases; Attache cases; Portfolio cases [briefcases]; Briefbags; Backpacks; Hiking rucksacks; Bags for climbers; Rucksacks on castors; Small rucksacks; Game bags [hunting accessories]; Tool pouches, sold empty; Courier bags; Shoulder bags; Travelling handbags; Travel cases; Traveling trunks; Tie cases for travel; Travelling sets; Holdalls for sports clothing; Travelling bags made of imitation leather; Travel garment covers; Portmanteaus; Travel luggage; Music cases; Attache cases made of imitation leather; Suitcase handles; Ladies' handbags; Clutches [purses]; Purses; Purses, not of precious metal; Make-up boxes; Towelling bags; Japanese utility pouches (shingen-bukuro); Handbags; Clutch bags; Handbags made of imitations leather; Handbags made of leather; Chain mesh purses; Handbags, purses and wallets; Gladstone bags; Key bags; Holders in the nature of cases for keys; Key cases made of leather; Vanity cases, not fitted; Cosmetic purses; Cosmetic bags sold empty; Credit card holders made of leather; Leather suitcases; Leather cases; Attache cases made of leather; Tool bags of leather, empty; Garment bags for travel made of leather; Leather pouches; Hat boxes of leather; Shopping bags made of skin; Leather credit card wallets; Bags [envelopes, pouches] of leather, for packaging; Leather wallets; Bags made of leather; Leather bags and wallets; Hat boxes for travel; Suitcases; Trunks and suitcases; Travel baggage; Roller suitcases; Small suitcases; Business cases; Overnight cases; Flight bags; Hipsacks; Bumbags; Cosmetic cases sold empty; Wallets, not of precious metal; Card wallets [leatherware]; Wallets for attachment to belts; Driving licence cases; Luggage covers; Garment bags for travel; Carriers for suits, shirts and dresses; Folio cases; Banknote holders; Wallets including card holders; Shopping bags with wheels attached; Two-wheeled shopping bags; Wheeled shopping bags; Shopping bags; Baby backpacks; Baby carriers worn on the body; Waterproof bags; Vanity cases sold empty; Slouch handbags; Small bags for men; Small purses; Small clutch purses; Daypacks; Valises; Overnight bags; Work bags; Cases of imitation leather; Card cases [notecases]; Business card cases; Credit card holders made of imitation leather; Credit card cases [wallets]; Credit-card holders; Tie cases; Key-cases of leather and skins; Key cases of imitation leather; Keycases; Commutation-ticket holders; Shaving bags sold empty; Charm bags (omamori-ire); Slings for carrying infants; Straps for luggage; Beach bags; Canvas bags; Canvas shopping bags; Knitted bags, not of precious metals; Plastic luggage tags; Wallets of precious metal; Wrist mounted purses; Coin purses, not of precious metal; Wallets; School knapsacks; Straps for handbags; Shoulder belts [straps] of leather; Net bags for shopping; Sports packs; Pouches; Gym bags; Sporrans; Folding briefcases; Saddlebags; Back frames for carrying children; Boxes of vulcanised fibre; Purse frames; Handbag frames; Bags for campers; Hiking bags; Randsels [Japanese school satchels]; Carry-on bags; Gentlemen's handbags; Carrying cases; Carrying cases for documents; Empty instrument cases for use by doctors; Kori wicker trunks; Flexible bags for garments; Wash bags (not fitted); Toiletry bags; Textile shopping bags; Belt bags and hip bags; Pouches for holding make-up, keys and other personal items; Satchels; Imitation leather bags; Roll bags; Sling bags; Bags for sports clothing; Nappy bags; Garment carriers; Tool bags, empty; Tool bags sold empty; Tool bags [empty] for motor cycles; Sling bags for carrying infants; Roller bags; Shoe bags for travel; Shoe bags; Souvenir bags; Traveling bags [leatherware]; Holdalls; Boston bags; Bags for sports; Bags; Coin holders; Reusable shopping bags; Pullmans; Luggage; Weekend bags; Wrist mounted carryall bags; Luggage tags [leatherware]; Luggage tags; Evening handbags; Trunks [luggage]; Pouch baby carriers; All-purpose athletic bags; All-purpose carrying bags; Multi-purpose purses; Art portfolios [cases]; Haversacks; Rattan canes; Hiking poles; Coats for cats; Coats for dogs; Leggings for animals; Leather leads; Costumes for animals; Harnesses; Clothing for pets; Covers and wraps for animals; Dog shoes; Collars for animals; Collars for cats; Collars for pets; Dog clothing; Muzzles; Dog leashes; Pet leads; Blankets for animals; Animal carriers [bags]; Feed bags for animals; Dog collars; Dog parkas; Animal harnesses; Leads for animals.

Class 20: Ladders and movable steps, non-metallic; Displays, stands and signage, non-metallic; Statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class; Animal housing and beds; Containers, and closures and holders therefor, non-metallic; Furniture and furnishings; Door, gate and window fittings, non-metallic; Fasteners, non-metallic; Mooring buoys, non-metallic; Locks and keys, non-metallic; Valves, non-metallic; Tree protectors [tubes] not of metal; Non-mechanical reels, not of metal, for flexible hoses; Tile spacers; Handles of plastics materials for hollowware; Holders for pennants; Handles made of plastics for doors; Wood tool handles; Reels of wood for yarn, silk, cord; Staves of wood; Wood doorknobs; Door stops of wood; Wood knobs; Clothes lines (Props for -), of wood or plastics; Wood broom handles; Tap venting plugs of wood; Wooden handles; Wooden plant markers; Drawer pulls of wood; Wooden sticks for holding candy or ice cream; Chain links of non-metallic materials; Curtain rings; Shower curtain rings; Wood door handles; Strap-hinges, not of metal; Non-metal hooks; Hooks for towels (Non-metallic -); Shower curtain hooks; Non-metal cup hooks; Ceramic pulls for furniture; Ceramic pulls for cabinets; Ceramic pulls for cabinets, drawers and furniture; Ceramic pulls for drawers; Hooks for wall hangings (Non-metallic -); Non-metal door viewers [non-magnified]; Identification bracelets, not of metal; Drawer pulls of earthenware; Ceramic knobs; Non-metal wheel chocks; Doorknobs, not of metal; Shoe dowels, not of metal; Cantilevered brackets of non-metallic materials [other than for building]; Door, gate and window fittings; Saw horses; Mouldings made of substitutes of wood for picture frames; Hard wood tree stakes; Plastic molds for making soap; Plastic molds for making soap for commercial production purposes; Handles of plastics materials for kettles; Protective shields of plastics materials for trees; Hose hangers not of metal; Hinges, not of metal incorporating a spring; Hinges, not of metal; Suspension rods (Non-metallic -) for hanging up articles; Tube plugs (Non-metallic -); Plugs for baths, not of metal; Basin plugs of non-metallic materials; Plugs for showers, not of metal; Non-metal garden stakes; Poles, not of metal; Strain relief clips (Non-metallic -); Cane connectors of non-metallic materials; Tool handles (Non-metallic -) for gardening implements; Knife handles, not of metal; Ring closures, other than of metal; Tree supports (Non-metallic -); Brackets of (Non-metallic -) used for fixing plaques; Plastic molds for use in manufacturing furniture; Identification tags of plastic for animals; Plastic handles; Plastic knobs; Non-metal dock cleats; Suction pads [fixings]; Grommets made of plastics materials; Spring washers of plastic; Springs made principally of plastic; Drawer pulls of porcelain; Porcelain pulls; Porcelain doorknobs; Plant supports; Non-metal shims; Drawer pulls of plastic; Spacers of plastic for use with sandwich panels; Stair rods of plastic; Plastic squeeze tubes, empty; Handles made of plastics for paint brushes; Handles of plastics materials for saucepans; Plastic suction cups; Pipe support sleeves [plastic]; Plastic washers; Tap venting plugs of plastic; Handles made of plastics for garden implements; Handles made of plastics for sweeping brushes; Handles made of plastics for tools; Handles made of plastics for brushes; Mouldings made of plastics for picture frames; Non-metal chains; Shower curtain rods; Stair rods; Shoulder poles [yokes]; Split cane flower sticks; Bath rails, not made of metal; Stakes for plants or trees; Molds of plaster for casting ceramic materials; Non-metal clamps; Flagpoles; Non-metal mirror hangers; Non-metal picture hangers; Drawer pulls, not of metal; Non-metal plant hangers; Non-metal weather vanes; Fans for personal use, non-electric; Shoe pegs, not of metal; Hand fans; Sink liners; Overhead suspension tracks of non-metallic materials; Plastic ear tags for livestock; Fasteners; Beds, bedding, mattresses, pillows and cushions; Clothes hangers and clothes hooks; Frames; Indoor blinds, and fittings for curtains and indoor blinds; Mirrors (silvered glass); Arbours [furniture]; Ambroid plates; Banqueting chairs; Contour chairs; Banking counters; Barstools; Cocktail units [furniture]; Chests, not of metal; Chests; Chests for toys; Tool chests, not of metal, empty; Security cabinets; Non-metal safety gates for babies, children, and pets; Layette boxes [of wood or plastic]; Buddhist family altars (butsudan); Tea tables; Upholstered furniture; Upholstered convertible furniture; Wall units [furniture]; Furniture parts; Make-up mirrors for travel use; Bathroom mirrors; Mouldings for mirrors; Personal compact mirrors; Wall mirrors; Cheval glasses; Hand-held mirrors [toilet mirrors]; Mirror frames; Silvered glass [mirrors]; Mirrors [furniture]; Mirrors [looking glasses not for carrying with]; Make-up mirrors for the home; Mirrors enhanced by electric lights; Printed mirrors; Mirror tiles; Tiles (Mirror -) for fixing to walls; Mirrors for use in powder compacts; Locker mirrors; Shaving mirrors; Make-up mirrors for purses; Bamboo blinds; Bamboo curtains; Metal venetian blinds [internal]; Curtain runners; Fittings for curtains; Holders for use in the securing of window coverings; Curtain holders, not of textile material; Wooden blinds; Tie back hooks made of wood [curtain]; Horizontal slatted blinds [indoor] for doors; Venetian blinds; Horizontal venetian blinds [indoor] for windows; Horizontal venetian blinds [indoor] for doors; Curtain hooks; Metal indoor window blinds; Indoor blinds [roller]; Pulleys of plastics for blinds; Curtain rails; Bead curtains; Curtain hooks made of metal; Metal interior roller blinds for guiding light; Metal curtain rings; Curtain embraces of metal for holding back curtains; Non-metal curtain rings; Slatted blind connectors; Blinds of reed, rattan or bamboo (sudare); Thermal blinds [indoor]; Curtain suspension fittings; Drapery hardware; Support rods for curtains; Supports for supporting curtain poles; Supports for fixing curtain poles; Curtain embraces of plastics for holding back curtains; Expanding rails of plastics for net curtains; Plastic hardware for blinds; Curtain hooks made of plastics; Tie back hooks made of plastics [curtain]; Polyvinyl chloride blinds [indoor]; Bead curtains for decoration; Slatted blind controls [non-electric]; Window blinds made of wood [indoor]; Clamps (Non-metallic -) for fixing blinds; Clamps (Non-metallic -) for fixing insect screens; Clamps (Non-metallic -) for fixing pleated blinds; Brackets of (Non-metallic -) for hanging window draperies; Non-metallic blinds [slatted] for internal use; Curtain rollers; Tie back hooks of brass [curtain]; Slatted indoor blinds; Curtain pins; Rods for net curtains; Curtain suspension devices; Curtain drawing devices, other than electrically operated; Blackout blinds [indoor]; Blackout blinds [slatted, indoor]; Austrian blinds; Curtain tracks; Window blinds [indoor]; Blinds (Slatted indoor -) for protection against light; Louvre blinds [indoor]; Screens in the nature of blinds (indoor); Indoor textile blinds; Sun screens [indoor], not of metal or textile; Sun screens [slatted indoor]; Indoor window blinds [shades] [furniture]; Slatted indoor blinds for windows; Interior venetian blinds; Vertical blinds [indoor]; Sun screens [slatted outdoor]; Blind pulls of non-metallic materials; Woven timber blinds [furniture]; Curtain tie-backs; Tool boxes (non-metallic -) [empty]; Boxes of wood or plastic; Crates and pallets; Paper towel dispensers [fixed, not of metal]; Toilet seat cover dispensers (non-metallic -) [fixed]; Wooden chests for the storage of toys; Toilet paper dispensers, fixed, not of metal; Wooden bins; Boxes of wood; Wooden boxes for storing toys; Wooden boxes for industrial packaging purposes; Wood planters; Wooden tubs [not bath tubs]; Packaging containers made of wood; Bottle casings of wood; Portable boxes [containers] of wood; Containers made of synthetic material [other than for household or kitchen use]; Containers made of cane; Containers made of horn; Containers made of bone; Containers in the form of boxes made of wood; Medicine chests; Corrugated fibreboard boxes; Boxes made of laminated plastics; Boxes made of paper coated wood; Baskets; Milk churns [non-metallic]; Floating containers, not of metal; Compost bins of non-metallic materials; Composting receptacles of non-metallic materials; Combined closures for containers [non-metallic and not for household or kitchen use]; Combined containers [non-metallic and not for household or kitchen use]; Caskets made of mother of pearl; Capsules [non-metallic containers]; Flexible containers of plastics for the transport of liquids; Flexible containers of plastics for the storage of liquids; Dispensers (Fixed -) for towels; Wooden stoppers for industrial packaging containers; Caskets made of wood; Wood storage tanks; Wooden storage boxes; Kennels for household pets; Pet houses; Cat baskets; Dog baskets; Hutches; Dog beds; Beds for animals; Pet cushions.

Class 21: Brushes and brush-making articles; Cosmetic and toilet utensils and bathroom articles; Unworked and semi-worked glass, not specified for use; Tableware, cookware and containers; Statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class; Cleaning articles; Brushes for cleaning footwear; Brushes for cleaning tanks and containers; Fireplace brushes; Feeding bottle brushes; Pot cleaning brushes; Golf brushes; Lamp-glass brushes; Brushes for cleaning cars; Brushes for cleaning; Skin cleansing brushes; Cleaning brushes for sports equipment; Brushes for cleaning medical instruments; Bath brushes; Brushes for cleaning musical instruments; Brushes; File brushes; Mane brushes [horse combs]; Exfoliating brushes; Toothbrushes, electric; Electric rotating hair brushes; Electric pet brushes; Electric brushes, except parts of machines; Electrically heated hair brushes; Horse brushes of wire; Tar-brushes, long handled; Hairbrushes; Floor brushes; Brushes for household purposes; Brushes for connection to garden hose; Brushes for parquet floors; Brushes for personal hygiene; Clothes brushes; Ski wax brushes; Scraping brushes; Brushes for pets; Material for brush-making; Brush goods; Mascara brushes; Nail brushes; Brushes adapted to receive a cleaning agent; Brushes connectable to water hoses; Brushes for use on tree bark; Brushes for grooming golf putting greens; Brushes for pipes; Bottle brushes; Blacking brushes; Billiard table brushes; Horse brushes; Ship-scrubbing brushes; Brushes for grooming horses; Hair for brushes; Horsehair for brushes; Cattle hair for brushes; Toilet brushes; Shaving brushes; Pig bristles; Make-up brushes; Animal bristles [brushware]; Toothbrushes; Filaments for making brushes; Tub brushes; Hard brooms; Hot air hair brushes; Brush holders; Raccoon dog hair for brushes; Crumb brushes; Brooms; Scrubbing brushes; Manual toothbrushes; Hand-operated ski brushes; Feather-dusters; Interdental brushes for cleaning the teeth; Dental cleaning articles; Abrasive sponges for scrubbing the skin; Eye make-up applicators; Aerosol dispensers, not for medical purposes; Applicators for cosmetics; Applicators for applying eye make-up; Bathroom glass holder; Racks for cosmetics; Holders for cosmetics; Sponge holders; Hand soap dispensers; Shower gel dispensers; Dispensers for the storage of toilet paper [other than fixed]; Dispensers for paper wipes [other than fixed]; Skin care cream dispensers; Body cleanser dispensers; Hand towel dispensers, other than fixed; Dispensers for liquid soap; Dispensers for liquids for use with bottles; Dispensers for liquid soap [for household purposes]; Toilet roll dispensers; Hair fixer dispensers; Cotton ball jars; Shampoo dispensers; Baby bath tubs; Soap brackets; Hand soap holders; Body cleanser holders; Rails for towels, not of precious metal; Shower gel holders; Shampoo holders; Toilet roll holders; Fitted holders for hair fixers; Wash basin pitchers; Electric hair combs; Make-up sponges; Sponges for applying body powder; Facial sponges for applying make-up; Bath sponges; Scouring sponges; Combs; Electric combs; Hair combs; Cleaning combs; Large-toothed combs for the hair; Eyelash combs; Droppers sold empty for cosmetic purposes; Rinsing tubs; Eyebrow brushes; Powder compacts; Cosmetic spatulas; Cosmetic bags [fitted]; Cosmetic spatulas for use with depilatory preparations; Tissue box covers; Metal boxes for dispensing paper towels; Boxes for dispensing paper towels; Pill boxes [not for medical purposes]; Pill boxes for personal use; Soap boxes; Boxes for holding artificial teeth; Towel rings; Rings for towels, not of precious metal; Rings for towels [bathroom fittings]; Towel rings, not of precious metal; Powder puffs; Perfume bottles; Hair color application bottles; Nylon mesh body cleansing puff; Body scrubbing puffs; Foam toe separates for use in pedicures; Plastic bathtubs for children; Exfoliating pads; Exfoliating slippers; Ceramic tissue box covers; Personal dispensers for pills or capsules for domestic use; Caddies for holding hair accessories for household and domestic use; Appliances for removing make-up, non-electric; Appliances for removing make-up, electric; Make-up removing appliances; Wall soap dishes; Soap containers; Containers for cosmetics; Lotion containers, empty, for household use; Shaving dishes; Children's potties; Chamber pots; Basins [receptacles]; Bowls [basins]; Facial cleansing sponges; Body sponges; Loofahs; Sponges; Hair tinting bowls; Microdermabrasion sponges for cosmetic use; Scalp scratchers; Stencils for use when applying make-up; Glass cartridges for medication, empty; Exfoliating mitts; Scent sprays [atomizers]; Nebulizers for household use; Perfume sprayers [sold empty]; Vaporizers for perfume sold empty; Perfume vaporizers; Electric make-up removing appliances; Deodorising apparatus for personal use; Natural sea sponges; Baby baths, portable; Powder compacts of precious metal [sold empty]; Powder compacts of precious metal; Powder compacts [empty]; Powder compacts [cases]; Empty spray bottles; Toilet cases; Cases adapted for cosmetic utensils; Plastic bath racks [caddies]; Plastic buckets for storing bath toys; Foot exfoliating pads; Cosmetic utensils; Comb cases; Shaving brushes of badger hair; Lip brushes; Hair tinting brushes; Back scratchers; Washtubs; Fitted racks for hair fixers; Fitted racks for skin care creams; Fitted holders for skin creams; Wash basins [bowls, not parts of sanitary installations]; Bathroom basins [receptacles]; Trays for use in fingernail polishing; Towel rails and rings; Applicator sticks for applying makeup; Combs for back-combing hair; Toilet utensils; Toilet sponges; Shaving brush stands; Shampoo racks; Water closet brush holders; Soap racks; Shower gel racks; Toilet paper racks; Racks for body cleansers; Dispensers for cosmetics; Paper towel dispensers; Dispensers for facial tissues; Soap dispensers; Non-electric make-up removing appliances; Toilet plungers; Towel racks; Glasses, drinking vessels and barware; Glass bulbs [receptacles]; Tealight burners; Biodegradable bowls; Biodegradable plates; Biodegradable trays; Biodegradable paper pulp-based bowls; Biodegradable trays for domestic purposes; Biodegradable paper pulp-based plates; Abrasive instruments for kitchen [cleaning] purposes; Strainers; Colanders for household use; Strainers for household use; Caviar coolers; Tea strainers; Tea pots of precious metal; Teapots; Tea services [tableware]; Tea services of precious metal; Tea services not of precious metal; Teacups (yunomi); Tea infusers; Tea infusers not of precious metal; Tea infusers of precious metal; Biodegradable cups; Biodegradable paper pulp-based cups; Drinking straws; Coolers [ice pails]; Wine strainers; Pewter tankards; Pewter goblets; Decanters; Holders for tumblers; Cup holders; Drinking glass holders; Pitchers; Wine jugs; Toby jugs; Mugs of precious metal; Jugs, not of precious metal; Aluminum water bottles, empty; Mugs made of fine bone china; Mugs made of ceramic materials; Mugs made of plastic; Mugs, not of precious metal; Training cups for babies and children; Hip flasks; Wine decanters; Wine buckets; Bottle buckets; Champagne buckets; Mugs made of earthenware; Cocktail glasses; Compostable cups; Beer jugs; Pint tankards; Tankards; Tankards of precious metal; Snifters; Bottle baskets coated with precious metal; Pipettes [wine-tasters]; Sake serving bottles (tokkuri); Flasks; Cordial glasses; Liqueur sets; Cocktail stirrers; Beverage stirrers; Ice scoops [barware]; Non-electric bottle openers; Bottle coolers; Coolers for wine; Drinking vessels; Beverageware; Neoprene zippered bottle holders; Reusable stainless steel water bottles; Bottle openers [hand-operated]; Bottle openers incorporating knives; Bottle openers, electric and non-electric; Foil cutters for wine bottles; Liqueur flasks; Drinking goblets; Goblets; Tumblers; Wine pourers; Wine aerators; Cocktail sticks; Portable beverage container holders; Charms for attachment to beverage glassware for identification purposes; Pint glasses; Drinking horns; Siphon bottles for carbonated water; Glass decanters; Cocktail shakers; Shaker bottles sold empty; Sake cups; Sake cups [not of precious metal]; Cups of precious metal; Cups, not of precious metal; Glasses [drinking vessels]; Brandy snifters; Margarita glasses; Stemware; Pilsner drinking glasses; Whisky glasses; Champagne flutes; Schnapps glasses; Wine glasses; Glassware not included in other classes; Glass holders; Bottle stands; Wine bottle cradles; Thermal insulated wrap for cans to keep the contents cold or hot; Vacuum pumps for wine bottles; Cups made of plastics; Fitted liners for ice buckets; Corkscrews with knives; Corkscrews, electric and non-electric; Drip preventers for bottles; Beer mugs; Aquaria and vivaria; Devices for pest and vermin control; Animal activated livestock feeders; Perches for bird cages; Wire cages for household pets; Electronic pet feeders; Filters for use in cat litter pans; Litter boxes [trays] for pets; Combs for use on domestic animals; Combs for animals; Currycombs; Bird cages for domestic birds; Cages for household pets; Pig troughs; Bird baths not being structures; Cages of metal for domestic use; Metal pans for cattle; Feeding troughs of metal for cattle; Animal activated animal feeders; Small animal feeders; Indoor terrariums [vivariums]; Indoor terrariums [plant cultivation]; Flower pot holders; Bouquet holders; Holders for flowers; Jardinieres of earthenware; Watering cans; Flower baskets; Plant baskets; Nozzles for watering cans; Flower pots; Planters of earthenware; Planters of plastic; Planters of clay; Planters of glass; Bowls for floral decorations; Flower bowls; Bowls for plants; Saucers for flower pots; Compost containers for household use; Containers for flowers; Repotting containers for plants; Covers, not of paper, for flower pots; Window-boxes; Plastic lids for plant pots; Seed trays; Garden syringes; Gardening gloves; Flower bowls of precious metal; Flower vases; Vases; Water syringes for spraying plants; Nozzles for watering hose; Nozzles for hosepipes; Plant syringes; Flower syringes; Greenhouse syringes; Glass vases; Jardinieres of glass; Seed tray inserts; Watering devices; Sprayers attached to garden hoses; Syringes for watering flowers and plants; Sprinklers; Sprayer wands for garden hoses; Spray nozzles for garden hoses; Porcelain flower pots; Pot plant support sticks; Holders for flowers and plants [flower arranging]; Plastic spray nozzles; Lawn sprinklers; Dustbins; Air fragrancing apparatus; Abrasive discs for kitchen [cleaning] purposes; Abrasive pads; Abrasive pads for kitchen or domestic purposes; Abrasive sponges for kitchen [cleaning] use; Anti-static cloths for household use; Floor wax applicators mountable on a mop handle; Drying boards for washed, starched and then stretched pieces of kimono (hari-ita); Scourers for saucepans; Abrasive pads for kitchen purposes; Household scouring pads; Fitted holders for wiping, drying, polishing and cleaning paper; Dispensers for detergents; Rubber gloves for household use; Shoe cloths; Squeegees [hand-operated] for cleaning; Cleaning cotton; Eyeglass cleaning cloths; Lint rollers [adhesive] for removing lint from clothing; Automobile wheel cleaning brushes; Brushes for cleaning bicycle components; Brushes for footwear; Chamois leather for cleaning; Mop heads; Lintless cleaning cloths; Cloths for wiping optical lenses; Dusting cloths; Cloth for washing floors; Floor cloths; Dishcloths for washing dishes; Leathers for cleaning purposes; Polishing leather; Kitchen sponges; Carpet rakes; Pads of metal for cleaning; Saucepan scourers of metal; Cleaning tow; Buckets incorporating mop wringers; Buckets incorporating castors; Mop pails; Buckets for household use; Mop pails incorporating mop wringers; Bathroom pails; Buckets; Dishwashing brushes; Dusting brushes; Lint brushes; Waste paper baskets; Cotton waste for cleaning; Steel wool for cleaning; Metallic wool for scouring purposes; Metallic wool for cleaning purposes; Glass cleaning implements; Crumb collecting instruments [non-electric]; Funnels; Non-electric carpet cleaners; Carpet sweepers (Non-electric -); Non-electric floor polishers; Carpet shampoo applicators (Non-electric -); Dusting apparatus, non-electric; Dryer balls; Sponges for household purposes; Mops; Cleaning mitts of fabric; Polishing apparatus and machines, for household purposes, non-electric; Dust-pans; Polishing materials for making shiny, except preparations, paper and stone; Lint rollers; Rinsing pails; Grill scrapers [cleaning articles]; Scrapers for household purposes; Cinder sifters [household utensils]; Glass wool other than for insulation; Steelwool; Cleaning instruments, hand-operated; Household gloves for cleaning purposes; Dusting gloves; Car washing mitts; Shoe polishing mitts; Polishing gloves; Gloves for household purposes; Window dusters; Furniture dusters; Dusters; Scouring pads; Smoke absorbers for household purposes; Carpet beaters [hand instruments]; Fitted dispensers for wiping, drying, polishing and cleaning paper; Plastic bowls [basins]; Plastic buckets; Household plastic gloves; Shoe scrapers incorporating brushes; Buckets for industrial use; Buckets made of woven fabrics; Wool waste for cleaning; Washing boards; Cleaning cloths for camera lenses; Cloths for cleaning made from cellulose; Cleaning rags; Cloths for wiping tableware; Artificial sponges for household purposes; Coal scuttles; Optical fiber connector cleaning cloths; Crumb trays; Automobile oil funnels; Materials [cloths] for polishing; Glossing cloths [not abrasive]; Shoe shine cloths; Squeegees for dishes; Fitted racks for wiping, drying, polishing and cleaning paper; Squeegees [for household use]; Carpet sweepers; Scouring cloths; Mop wringers; Dispensers for cellulose wipes, for household use; Plungers for clearing blocked drains; Spouts; Apparatus for wax-polishing, non-electric; Piggy banks; Commemorative plates; Ornamental glass spheres; Decorative boxes of glass; Ornamental models made of porcelain; Ornamental sculptures made of porcelain; Non-metal coin banks; Model vehicles [ornaments] made of terra-cotta; Painted glassware; Majolica; Ice sculptures for decorative purposes; Ceramic coin boxes; Boxes of earthenware; Plaques of pottery; Fiberglass figurines; Stained glass figurines; Figurines made of terra cotta; Plaques of porcelain; Decorative sand bottles; China ornaments; Busts of porcelain, ceramic, earthenware or glass; Busts made of glass; Busts made of terra cotta; Busts made of china; Busts made of earthenware; Clothes-pegs; Shoe horns; Clothes drying racks; Laundry baskets; Ironing board covers, shaped; Battery operated lint removers; Ironing cloths; Glove stretchers; Boot trees [stretchers]; Clothing stretchers; Tie presses; Shirt stretchers; Trouser stretchers; Trouser presses; Shoe trees; Frames for drying and maintaining the shape of clothing items; Buttonhooks; Electric lint removers; Boot stretchers of wood.

Class 24: Filtering materials of textile; Woven fabrics; Textile goods, and substitutes for textile goods; Fabrics made from acrylic, other than for insulation; Fustian; Diapered linen; Fabrics made from cotton, other than for insulation; Brocades; Cotton fabrics; Furnishing fabrics; Furnishing fabrics in the piece; Damask; Drugget; Gift wrap of fabric; Denim fabric; Elastic fabrics for clothing; Knitted elastic fabrics for ladies underwear; Knitted elastic fabrics for gymnastic dresses; Knitted elastic fabrics for sportswear; Knitted elastic fabrics for bodices; Esparto fabric; Flannel [fabric]; Fleece made from copolymers; Fleece made from polypropylene; Foulard [fabric]; Gauze [cloth]; Rags for paper making; Silk cloth; Silk fabrics for furniture; Silk fabrics for printing patterns; Jute fabric; Sponge cloths for textile use; Calico; Tissues being textile piece goods; Printed calico cloth; Kashmir fabric; Composite textile materials; Trellis [cloth]; Hemp fabric; Fabrics for shirts; Lace fabrics; Crepe [fabric]; Crepon; Household textile piece goods; Piece goods made of non-woven plastic material; Piece goods made of textile materials bonded with plastics; Piece goods made of textile materials bonded with rubbers; Piece goods made of woven plastic material; Textile piece goods for furnishing purposes; Textile piece goods for use in the manufacture of shoes; Textile piece goods for making bedding covers; Textile piece goods for use in the manufacture of protective clothing; Textile fabric piece goods for use in the manufacture of clothing; Textile piece goods (Polyurethane coated -) for making waterproof clothing; Textile piece goods for making cushion covers; Textile piece goods for use in the manufacture of industrial filters; Textile piece goods for making-up into towels; Textile piece goods for use in the manufacture of boots; Textile piece goods for making curtains; Textile piece goods made of cotton; Tartan piece goods; Textile piece goods made of plastics materials; Cloth for tatami mat edging ribbons; Fabric for manufacturing women's outerwear; Fabric for manufacturing men's outerwear; Diaper changing cloths for babies; Interfacings; Fabrics [piece goods]; Fabrics being textile piece goods for use in embroidery; Fabrics being textile piece goods for use in manufacture; Fabrics being textile piece goods for use in patchwork; Fabrics being textile piece goods for use in tapestry; Fabrics being textile piece goods made of mixtures of fibres; Fabrics for use as linings in clothing; Fabrics for use in covering armchairs; Fabrics for the manufacture of furnishings; Fabrics for use in making diapers; Fabrics for manufacturing tents; Materials for soft furnishings; Marabouts [cloth]; Corduroy fabrics; Mixed fiber fabrics; Elastic yarn mixed fabrics; Worsted fabrics; Wool yarn fabrics; Regenerated fiber yarn fabrics; Semi-synthetic fiber fabrics; Fabrics of organic fibres, other than for insulation; Hemp yarn fabrics; Waste cotton fabrics; Fabrics made from synthetic threads; Fabrics woven from ceramic fibres, other than for insulation; Polymer coated fabrics; Fabrics covered with motifs to be embroidered; Fabrics for sale in kit form for making toy monsters; Fabrics for manufacturing garden furniture; Fabrics for use in the manufacture of exterior coverings for chairs; Loden cloth; Fabrics made from linen, other than for insulation; Linen cloth; Press fabrics all for use in the paper making industry; Press felts all for use in the paper making industry; Press felt; Sheets of sailcloth for screening; Insecticide-treated mosquito nets; Coverings for furniture; Linens; Wall hangings; Labels of textile; Drapery; Brocade flags; Soft furnishings; Frieze [cloth]; Sponge cloths [textile piece goods]; Japanese ceremonial wrapping cloth (Fukusa); Japanese general wrapping cloth (Furoshiki); Handkerchiefs; Towels [textile] for kitchen use; Nap raised cloth; Linen lining fabric for shoes; Handkerchiefs of textile; Covers for toilet lids of fabric; Banners of textile; Disposable cloths; Prayer cloth; Replacement seat covers [loose] for furniture; Protective loose covers for mattresses and furniture; Protective covers [dust sheets] for use in decorating; Chair backs [textile articles]; Dust sheets; Canopy covers; Furniture coverings (unfitted); Furniture coverings of textile; Toilet seat covers; Chair covers; Furniture coverings of plastic; Fitted toilet lid covers of fabric; Sofa covers; Bean bag covers; Loose covers made of textile materials for furniture; Loose covers for garden furniture; Coverings of textile and of plastic for furniture (unfitted); Covers of textile for water closets; Woven fabrics for furniture; Fitted toilet lid covers [made of fabric or fabric substitutes]; Unfitted fabric furniture covers; Bath linen; Kitchen and table linens; Bed clothes and blankets; Glass cloths [towels]; Towels of textile; Household linen, including face towels; Children's towels; Sanitary flannel; Towelling [textile]; Towelling coverlets; Turkish towel; Face cloths of towelling; Golf towels; Japanese cotton towels (tenugui); Bath towels; Disposable wash cloths; Face cloths; Bath linen, except clothing; Face flannels in the form of gloves; Cloths for removing make-up; Bath sheets; Hooded towels; Beach towels; Towels [textile] for the beach; Duvet covers; Quilts of towel; Towelling [textile] adapted for use in dispensers; Face towels; Face towels of textile; Mitts made of non-woven fabric for washing the body; Hand towels; Towels [textile] for use in connection with toddlers; Towels [textile] for use in connection with babies; Make-up removal cloths [textile], other than impregnated with cosmetics; Hand towels of textile; Towels of textile sold in pack form; Towels of textile featuring American football team logos; Make-up removal cloths [textile], other than impregnated with toilet preparations; Bath mitts; Cloths for washing the body [other than for medical use]; Cloths of woven textile material for washing the body [other than for medical use]; Cloths of non-woven textile material for washing the body [other than for medical use]; Bar cloths; Table runners; Textile smallwares [table linen]; Table runners not of paper; Disposable tablecloths of textile; Dinner mats of plastics material; Lace table mats not made of paper; Tea cloths; Kitchen towels; Kitchen linen; Bed linen and table linen; Fabric table toppers; Table covers of plastic; Mats of linen; Drink coasters of table linen; Coasters [table linen]; Drink mats of table linen; Place mats, not of paper; Table linen; Table covers; Table covers of damask; Table covers of non-woven textile fabrics; Table linen, not of paper; Tablemats, not of paper; Napery of textile; Fabric table runners; Doilies of textile; Individual place mats made of textile; Table napkins of textile; Textile tablecloths; Textile flags used for place settings; Tablecloths, not of paper; Dish cloths; Household cloths for drying dishes; Dish towels for drying; Vinyl place mats; Oilcloth for use as tablecloths; Washing gloves; Crib canopies; Lap rugs; Tartan travelling rugs; Blankets for household pets; Receiving blankets; Children's blankets; Terry linen; Silk blankets; Disposable bedding of paper; Disposable bedding of textile; Bed blankets made of cotton; Bed blankets made of man-made fibres; Valanced bed covers; Valence linen; Bed linen made of non-woven textile material; Silk bed blankets; Fabric bed valances; Waterproof bed clothes; Infants' bed linen; Bed canopies; Bed warmer covers; Paper pillowcases; Duvets; Bed sheets of plastic [not being incontinence sheets]; Curtains of plastic; Swags [curtains]; Pelmets; Ready made curtains of plastics; Ready made curtains of textiles; Ready made curtains; Lace curtains; Indoor and outdoor curtains; Valances [textile draperies]; Moquettes [curtains]; Fire-retardant textile shower curtains; Coverings for windows; Curtains made of plastics for use in shower baths; Curtain linings; Pleated shades; Shower curtains of textile or plastic; Textiles in the form of window furnishings; Textile materials for use as window coverings; Curtains of textile or plastic; Curtain holders of textile material; Textile curtain pelmets; Vinyl curtains; Window covering products made of textile material; Pleated curtains.

2. European Union trade mark application No 15 513 658 is rejected for all the above goods. It may proceed for the remaining goods, notably umbrella sticks; frames for umbrellas or parasols; metal parts of umbrellas; umbrella rings; umbrella handles; umbrella or parasol ribs; sausage skins and imitations thereof; sausage skins [synthetic]; gut for making sausages in Class 18.

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 15 513 658, the word mark ‘TORO’. The opposition is based on the following earlier rights:

European Union trade mark registration No 2 844 264 ‘TORO’;

European Union trade mark registration No 8 310 534 ;
European Union trade mark registration No 13 356 266 ;

European Union trade mark registration No 13 389 739 ;

European Union trade mark registration No 9 251 984 ;

European Union trade mark application No 14 194 542 .

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

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s registered European trade marks, i.e. trade marks no. 1-5 listed above.

The goods

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

EUTM No 2 844 264 ‘TORO’

Class 18: Goods of leather and imitations of leather (not included in other classes), wallets, suitcases, backpacks, briefcases, purses, umbrellas, parasols and saddlery.

EUTM No 8 310 534

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

EUTM No 13 356 266

Class 21: Household or kitchen utensils and containers; Combs and sponges; Brushes (except paintbrushes); Glassware, porcelain and earthenware not included in other classes.

Class 24: Textiles and textile goods, not included in other classes; Bed covers; Table covers.

EUTM No 13 389 739

Class 8: Manicure sets; Manicure and pedicure tools and implements; Hand tools and implements (hand-operated); Cutlery; Side arms; Razors.

Class 20: Furniture, Fans for personal use, non-electric and Frames; Non-metallic hardware; Door, gate and window fittings; Fasteners; Statues, Statuettes and Objets d'art, and decorations made of materials including wood, Wax, Plaster or plastic; Mattresses, cushions, floor cushions; Blinds, and fittings for curtains and blinds; Containers, and closures and holders therefor; Baskets; Barrels and casks; Crates and pallets; Ladders and movable steps; Displays, stands and signboards.

EUTM No 9 251 984

Class 8: Hand tools and implements (hand operated); cutlery; side arms; razors.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials or of plastics.

The contested goods are the following:

Class 18: Umbrellas and parasols; Saddlery, whips and animal apparel; Sausage skins and imitations thereof; Walking staffs; Luggage, bags, wallets and other carriers; Leather cloth; Goldbeaters' skin; Imitation leather; Cattle skins; Imitation leather sold in bulk; Chamois leather, other than for cleaning purposes; Kid; Sheets of leather for use in manufacture; Studs of leather; Industrial packaging containers of leather; Boxes made of leather; Trimmings of leather for furniture; Leather straps; Girths of leather; Furs sold in bulk; Butts [parts of hides]; Valves of leather; Curried skins; Leather and imitations of leather; Leather for furniture; Leather for shoes; Leather for harnesses; Leather sold in bulk; Leatherboard; Sheets of imitation leather for use in manufacture; Umbrella sticks; Umbrellas; Golf umbrellas; Umbrellas for children; Japanese oiled-paper umbrellas (janome-gasa); Japanese paper umbrellas (karakasa); Frames for umbrellas or parasols; Metal parts of umbrellas; Umbrella rings; Covers for parasols; Rainproof parasols; Umbrella covers; Beach umbrellas [beach parasols]; Bags for umbrellas; Umbrella handles; Telescopic umbrellas; Parasols; Patio umbrellas; Combination walking sticks and umbrellas; Umbrella or parasol ribs; Leather wallets; Book bags; Briefcases and attache cases; Attache cases; Portfolio cases [briefcases]; Briefbags; Backpacks; Hiking rucksacks; Bags for climbers; Rucksacks on castors; Small rucksacks; Game bags [hunting accessories]; Tool pouches, sold empty; Courier bags; Shoulder bags; Travelling handbags; Travel cases; Traveling trunks; Tie cases for travel; Travelling sets; Holdalls for sports clothing; Travelling bags made of imitation leather; Travel garment covers; Portmanteaus; Travel luggage; Music cases; Attache cases made of imitation leather; Suitcase handles; Ladies' handbags; Clutches [purses]; Purses; Purses, not of precious metal; Make-up boxes; Towelling bags; Japanese utility pouches (shingen-bukuro); Handbags; Clutch bags; Handbags made of imitations leather; Handbags made of leather; Chain mesh purses; Handbags, purses and wallets; Gladstone bags; Key bags; Holders in the nature of cases for keys; Key cases made of leather; Vanity cases, not fitted; Cosmetic purses; Cosmetic bags sold empty; Credit card holders made of leather; Leather suitcases; Leather cases; Attache cases made of leather; Tool bags of leather, empty; Garment bags for travel made of leather; Leather pouches; Hat boxes of leather; Shopping bags made of skin; Leather credit card wallets; Bags [envelopes, pouches] of leather, for packaging; Leather wallets; Bags made of leather; Leather bags and wallets; Hat boxes for travel; Suitcases; Trunks and suitcases; Travel baggage; Roller suitcases; Small suitcases; Business cases; Overnight cases; Flight bags; Hipsacks; Bumbags; Cosmetic cases sold empty; Wallets, not of precious metal; Card wallets [leatherware]; Wallets for attachment to belts; Driving licence cases; Luggage covers; Garment bags for travel; Carriers for suits, shirts and dresses; Folio cases; Banknote holders; Wallets including card holders; Shopping bags with wheels attached; Two-wheeled shopping bags; Wheeled shopping bags; Shopping bags; Baby backpacks; Baby carriers worn on the body; Waterproof bags; Vanity cases sold empty; Slouch handbags; Small bags for men; Small purses; Small clutch purses; Daypacks; Valises; Overnight bags; Work bags; Cases of imitation leather; Card cases [notecases]; Business card cases; Credit card holders made of imitation leather; Credit card cases [wallets]; Credit-card holders; Tie cases; Key-cases of leather and skins; Key cases of imitation leather; Keycases; Commutation-ticket holders; Shaving bags sold empty; Charm bags (omamori-ire); Slings for carrying infants; Straps for luggage; Beach bags; Canvas bags; Canvas shopping bags; Knitted bags, not of precious metals; Plastic luggage tags; Wallets of precious metal; Wrist mounted purses; Coin purses, not of precious metal; Wallets; School knapsacks; Straps for handbags; Shoulder belts [straps] of leather; Net bags for shopping; Sports packs; Pouches; Gym bags; Sporrans; Folding briefcases; Saddlebags; Back frames for carrying children; Boxes of vulcanised fibre; Purse frames; Handbag frames; Bags for campers; Hiking bags; Randsels [Japanese school satchels]; Carry-on bags; Gentlemen's handbags; Carrying cases; Carrying cases for documents; Empty instrument cases for use by doctors; Kori wicker trunks; Flexible bags for garments; Wash bags (not fitted); Toiletry bags; Textile shopping bags; Belt bags and hip bags; Pouches for holding make-up, keys and other personal items; Satchels; Imitation leather bags; Roll bags; Sling bags; Bags for sports clothing; Nappy bags; Garment carriers; Tool bags, empty; Tool bags sold empty; Tool bags [empty] for motor cycles; Sling bags for carrying infants; Roller bags; Shoe bags for travel; Shoe bags; Souvenir bags; Traveling bags [leatherware]; Holdalls; Boston bags; Bags for sports; Bags; Coin holders; Reusable shopping bags; Pullmans; Luggage; Weekend bags; Wrist mounted carryall bags; Luggage tags [leatherware]; Luggage tags; Evening handbags; Trunks [luggage]; Pouch baby carriers; All-purpose athletic bags; All-purpose carrying bags; Multi-purpose purses; Art portfolios [cases]; Haversacks; Rattan canes; Hiking poles; Sausage skins [synthetic]; Gut for making sausages; Coats for cats; Coats for dogs; Leggings for animals; Leather leads; Costumes for animals; Harnesses; Clothing for pets; Covers and wraps for animals; Dog shoes; Collars for animals; Collars for cats; Collars for pets; Dog clothing; Muzzles; Dog leashes; Pet leads; Blankets for animals; Animal carriers [bags]; Feed bags for animals; Dog collars; Dog parkas; Animal harnesses; Leads for animals.

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

Contested goods in Class 8

Shear blades; tool belts [holders] are similar to a high degree to the opponent’s hand tools and implements. They can coincide in producer, end user and distribution channels. Furthermore they are complementary.

Edged and blunt weapons; side arms, other than firearms fall into the broad category of the opponent’s side arms and therefore these goods are identical.

The remaining contested goods are all some sort of hand tools, hand-operated implements used as tools in the respective professions, cutlery, other items equipped with a blade. There are examples of identity, such as hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance which is included in the broad category of the opponent’s hand tools and implements (hand operated), while other contested goods in Class 8 can, at least, coincide in purpose, manufacturers and distribution channels. Therefore, the remaining contested goods are at least similar to the opponent’s hand tools and implements (hand operated); cutlery; razors.

Contested goods in Class 18

Comparison with the identical EUTM No 2 844 264 ‘TORO’

The following goods are identical to the goods covered by the earlier mark, either because they appear on both lists (including synonyms) or because they are included in the broad category of the opponent’s goods:

Wallets; leather wallets; leather credit card wallets; leather wallets; wallets; wallets, not of precious metal; card wallets [leatherware]; wallets for attachment to belts; wallets including card holders; credit card cases [wallets]; wallets of precious metal are identical to the opponent’s wallets.

Leather suitcases; suitcases; suitcases; roller suitcases; small suitcases are identical to the opponent’s suitcases.

Backpacks; baby backpacks are identical to the opponent’s backpacks.

Briefcases and attache cases; attache cases; portfolio cases [briefcases]; briefbags are identical to the opponent’s briefcases.

Clutches [purses]; purses; purses, not of precious metal; chain mesh purses; purses; small purses; small clutch purses; wrist mounted purses; coin purses, not of precious metal; wallets; multi-purpose purses are identical to the opponent’s purses.

Umbrellas, golf umbrellas; umbrellas for children; japanese oiled-paper umbrellas (janome-gasa); japanese paper umbrellas (karakasa); telescopic umbrellas, patio umbrellas; combination walking sticks and umbrellas are identical to the opponent’s umbrellas.

Parasols, rainproof parasols; beach umbrellas [beach parasols] are identical to the opponent’s parasols.

Saddlery is identical to the opponent’s saddlery.

Net bags for shopping, Textile shopping bags are similar to the opponent’s backpacks given that they can coincide in purpose, can be manufactured by the same undertakings and distributed via the same channels.

Comparison with the earlier EUTM No 8 310 534

Harnesses, whips, animal harnesses identically appear on both lists of goods.

Rattan canes; hiking poles; walking staffs fall into the broad category of the opponent’s walking sticks and therefore they are identical.

Leather cloth; goldbeaters' skin; imitation leather; cattle skins; imitation leather sold in bulk; chamois leather, other than for cleaning purposes; kid; sheets of leather for use in manufacture; trimmings of leather for furniture; furs sold in bulk; butts [parts of hides]; curried skins; leather and imitations of leather; leather for furniture; leather for shoes; leather for harnesses; leather sold in bulk; leatherboard; sheets of imitation leather for use in manufacture are identical to the opponent’s leather and imitations of leather.

Covers for parasols; umbrella covers; bags for umbrellas are similar to the opponent’s Umbrellas, parasols given that they are complementary and they can coincide in manufacturers and distribution channels.

Luggage, bags, and other carriers; book bags; hiking rucksacks; bags for climbers; rucksacks on castors; small rucksacks; game bags [hunting accessories]; tool pouches, sold empty; courier bags; shoulder bags; travelling handbags; travel cases; traveling trunks; tie cases for travel; travelling sets; holdalls for sports clothing; travelling bags made of imitation leather; travel garment covers; portmanteaus; travel luggage; music cases; attache cases made of imitation leather; suitcase handles; ladies' handbags; make-up boxes; towelling bags; japanese utility pouches (shingen-bukuro); handbags; clutch bags; handbags made of imitations leather; handbags made of leather; handbags; gladstone bags; key bags; holders in the nature of cases for keys; key cases made of leather; vanity cases, not fitted; cosmetic bags sold empty; credit card holders made of leather; leather cases; attache cases made of leather; tool bags of leather, empty; garment bags for travel made of leather; leather pouches; hat boxes of leather; shopping bags made of skin; bags [envelopes, pouches] of leather, for packaging; bags made of leather; leather bags; hat boxes for travel; trunks; travel baggage; business cases; overnight cases; flight bags; hipsacks; bumbags; cosmetic cases sold empty; driving licence cases; luggage covers; garment bags for travel; carriers for suits, shirts and dresses; folio cases; banknote holders; shopping bags with wheels attached; two-wheeled shopping bags; wheeled shopping bags; shopping bags; baby carriers worn on the body; waterproof bags; vanity cases sold empty; slouch handbags; small bags for men; daypacks; valises; overnight bags; work bags; cases of imitation leather; card cases [notecases]; business card cases; credit card holders made of imitation leather; credit-card holders; tie cases; key-cases of leather and skins; key cases of imitation leather; keycases; commutation-ticket holders; shaving bags sold empty; charm bags (omamori-ire); slings for carrying infants; straps for luggage; beach bags; canvas bags; canvas shopping bags; knitted bags, not of precious metals; plastic luggage tags; school knapsacks; straps for handbags; shoulder belts [straps] of leather; sports packs; pouches; gym bags; sporrans; folding briefcases; saddlebags; back frames for carrying children; boxes of vulcanised fibre; purse frames; handbag frames; bags for campers; hiking bags; randsels [japanese school satchels]; carry-on bags; gentlemen's handbags; carrying cases; carrying cases for documents; empty instrument cases for use by doctors; kori wicker trunks; flexible bags for garments; wash bags (not fitted); toiletry bags; belt bags and hip bags; pouches for holding make-up, keys and other personal items; satchels; imitation leather bags; roll bags; sling bags; bags for sports clothing; nappy bags; garment carriers; tool bags, empty; tool bags sold empty; tool bags [empty] for motor cycles; sling bags for carrying infants; roller bags; shoe bags for travel; shoe bags; souvenir bags; traveling bags [leatherware]; holdalls; boston bags; bags for sports; bags; coin holders; reusable shopping bags; pullmans; luggage; weekend bags; wrist mounted carryall bags; evening handbags; trunks [luggage]; all-purpose athletic bags; all-purpose carrying bags; art portfolios [cases]; haversacks are at least similar to the opponents’ travelling bags given that they can coincide in end user and distribution channels.

As for the contested studs of leather; industrial packaging containers of leather; boxes made of leather; leather straps; girths of leather; valves of leather; luggage tags [leatherware]; luggage tags; animal apparel; pouch baby carriers; coats for cats; coats for dogs; leggings for animals; leather leads; costumes for animals; clothing for pets; covers and wraps for animals; dog shoes; collars for animals; collars for cats; collars for pets; dog clothing; muzzles; dog leashes; pet leads; blankets for animals; animal carriers [bags]; feed bags for animals; dog collars; dog parkas; leads for animals, they coincide in nature with the opponent’s goods made of leather and not included in other classes to the extent that they are goods made of leather. Their purpose, in the broadest sense, may also be the same in that they are for carrying, holding or storing different possessions or for use with animals. To that extent, these goods are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its goods, it cannot be assumed that they coincide in other criteria.

Umbrella sticks; frames for umbrellas or parasols; metal parts of umbrellas; umbrella rings; umbrella handles; umbrella or parasol ribs are dissimilar to all the goods of the opponent. These goods are items for manufacturing, which target a different public (manufacturers) and not the end consumers of the finished product. They do not coincide in either nature or purpose, they are neither complementary nor in competition.

Sausage skins and imitations thereof; sausage skins [synthetic]; gut for making sausages are materials that enclose the filling of a sausage. In fact, with the entry into force of the 11th edition of the Nice classification, these goods are no longer classified in Class 18 together with certain fashion items, but rather in class 29 together with other foodstuffs of animal origin. The nature, purpose, method of use of these goods is fundamentally different from that of the opponent’s goods in classes 8, 18, 20, 21, 24, i.e. hand-operated implements used as tools, leather goods mainly for fashion, carrying or riding, furniture, utensils, household apparatus, goods made of various non-leather material, such as textile. They are neither complementary nor in competition. They are dissimilar.

Contested goods in Class 20

Furniture and furnishings; beds; banqueting chairs; contour chairs; banking counters; barstools; cocktail units [furniture]; chests, not of metal; chests; chests for toys; tool chests, not of metal, empty; security cabinets; buddhist family altars (butsudan); tea tables; upholstered furniture; upholstered convertible furniture; wall units [furniture]; furniture parts fall into the opponent’s broad category, furniture. Therefore the goods are identical.

Bathroom mirrors; personal compact mirrors; wall mirrors; cheval glasses; hand-held mirrors [toilet mirrors]; silvered glass [mirrors]; mirrors [furniture]; mirrors [looking glasses not for carrying with]; make-up mirrors for the home; mirrors enhanced by electric lights; printed mirrors; mirrors for use in powder compacts; locker mirrors; shaving mirrors; make-up mirrors; make-up mirrors for travel use for purses fall into the opponent’s broad category, mirrors. Therefore the goods are identical.

Mouldings for mirrors; mirror frames; mirror tiles; tiles (mirror -) for fixing to walls are complementary to the opponent’s mirrors and are routinely produced by the same undertakings, Therefore the goods are similar.

Frames as a broader category include the opponent’s picture frames. Since the applicant’s broad category cannot be dissected ex officio, they are considered to be identical.

The remaining contested goods are at least similar to a low degree to the opponent’s goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials or of plastics given that the nature can be considered the same, and they may be available through the same distribution channels, such as those that specialise selling furniture and household goods. To that extent these goods are considered at least similar to a low degree, but in the absence of an express limitation by the opponent clarifying the vague term, it cannot be assumed that they are produced by the same companies, that their methods of use coincide, or that they are in competition or complementary.

Contested goods in Class 21

Brushes and brush-making articles; Brushes for cleaning footwear; Brushes for cleaning tanks and containers; Fireplace brushes; Feeding bottle brushes; Pot cleaning brushes; Golf brushes; Lamp-glass brushes; Brushes for cleaning cars; Brushes for cleaning; Skin cleansing brushes; Cleaning brushes for sports equipment; Brushes for cleaning medical instruments; Bath brushes; Brushes for cleaning musical instruments; Brushes; File brushes; Mane brushes [horse combs]; Exfoliating brushes; Toothbrushes, electric; Electric rotating hair brushes; Electric pet brushes; Electric brushes, except parts of machines; Electrically heated hair brushes; Horse brushes of wire; Tar-brushes, long handled; Hairbrushes; Floor brushes; Brushes for household purposes; Brushes for connection to garden hose; Brushes for parquet floors; Brushes for personal hygiene; Clothes brushes; Ski wax brushes; Scraping brushes; Brushes for pets; Material for brush-making; Brush goods; Mascara brushes; Nail brushes; Brushes adapted to receive a cleaning agent; Brushes connectable to water hoses; Brushes for use on tree bark; Brushes for grooming golf putting greens; Brushes for pipes; Bottle brushes; Blacking brushes; Billiard table brushes; Horse brushes; Ship-scrubbing brushes; Brushes for grooming horses; Hair for brushes; Horsehair for brushes; Cattle hair for brushes; Toilet brushes; Shaving brushes; Pig bristles; Make-up brushes; Animal bristles [brushware]; Toothbrushes; Filaments for making brushes; Tub brushes; Hard brooms; Hot air hair brushes; Brush holders; Raccoon dog hair for brushes; Crumb brushes; Brooms; Scrubbing brushes; Manual toothbrushes; Hand-operated ski brushes; Feather-dusters; Interdental brushes for cleaning the teeth; Automobile wheel cleaning brushes; Brushes for cleaning bicycle components; Brushes for footwear; Dishwashing brushes; Dusting brushes; Lint brushes; Shoe scrapers incorporating brushes; Cleaning articles; Dental cleaning articles; Abrasive sponges for scrubbing the skin, Electric hair combs; Make-up sponges; Sponges for applying body powder; Facial sponges for applying make-up; Bath sponges; Scouring sponges; Combs; Electric combs; Hair combs; Cleaning combs; Large-toothed combs for the hair; Eyelash combs; Facial cleansing sponges; Body sponges; Loofahs; Sponges; Hair tinting bowls; Microdermabrasion sponges for cosmetic use; Natural sea sponges; Combs for back-combing hair; Toilet sponges; Combs for use on domestic animals; Combs for animals; Currycombs; Abrasive sponges for kitchen [cleaning] use are at least similar to the opponent’s combs and sponges, brushes. There are examples of identity, such as combs; electric combs; hair combs, cleaning combs. In any event, all the above goods are at least similar to the opponent’s goods given that the can coincide in nature, purpose, manufacturers and they can be sold via the same outlets.

The following contested goods coincide in nature, manufacturers and sales outlets with the broad categories of the opponent, glassware, porcelain and earthenware not included in other classes, and are, therefore, at least similar: glassware not included in other classes; statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class; piggy banks; commemorative plates; ornamental glass spheres; decorative boxes of glass; ornamental models made of porcelain; ornamental sculptures made of porcelain; non-metal coin banks; model vehicles [ornaments] made of terra-cotta; painted glassware; majolica; ceramic coin boxes; boxes of earthenware; plaques of pottery; fiberglass figurines; stained glass figurines; figurines made of terra cotta; plaques of porcelain; decorative sand bottles; china ornaments; busts of porcelain, ceramic, earthenware or glass; busts made of glass; busts made of terra cotta; busts made of china; busts made of earthenware.

Unworked and semi-worked glass, not specified for use is similar to the opponent’s glassware as they coincide in nature and can coincide in manufacturers.

Ice sculptures for decorative purposes are similar to the opponent’s glassware given that they can coincide in their decorative purpose and manufacturers.

The remaining goods are utensils and containers, cleaning articles which are used in the household, kitchen, bathroom, or for cleaning the house. To this extent, they are at least similar to the opponent’s household or kitchen utensils and containers.

Contested goods in Class 24

All the contested goods can be grouped to four categories:

Textiles. The below contested goods are covered by the opponent’s broad category textiles. Therefore, they are identical.

Filtering materials of textile; Woven fabrics; Substitutes for textile goods; Fustian; Diapered linen; Fabrics made from cotton, other than for insulation; Brocades; Cotton fabrics; Furnishing fabrics; Furnishing fabrics in the piece; Damask; Drugget; Gift wrap of fabric; Denim fabric; Elastic fabrics for clothing; Knitted elastic fabrics for ladies underwear; Knitted elastic fabrics for gymnastic dresses; Knitted elastic fabrics for sportswear; Knitted elastic fabrics for bodices; Esparto fabric; Flannel [fabric]; Foulard [fabric]; Gauze [cloth]; Rags for paper making; Silk cloth; Silk fabrics for furniture; Silk fabrics for printing patterns; Jute fabric; Sponge cloths for textile use; Calico; Tissues being textile piece goods; Printed calico cloth; Kashmir fabric; Composite textile materials; Trellis [cloth]; Hemp fabric; Fabrics for shirts; Lace fabrics; Crepe [fabric]; Crepon; Household textile piece goods; Piece goods made of non-woven plastic material; Piece goods made of textile materials bonded with plastics; Textile piece goods for furnishing purposes; Textile piece goods for use in the manufacture of shoes; Textile piece goods for making bedding covers; Textile piece goods for use in the manufacture of protective clothing; Textile fabric piece goods for use in the manufacture of clothing; Textile piece goods for making cushion covers; Textile piece goods for use in the manufacture of industrial filters; Textile piece goods for making-up into towels; Textile piece goods for use in the manufacture of boots; Textile piece goods for making curtains; Textile piece goods made of cotton; Tartan piece goods; Cloth for tatami mat edging ribbons; Fabric for manufacturing women's outerwear; Fabric for manufacturing men's outerwear; Diaper changing cloths for babies; Interfacings; Fabrics [piece goods]; Fabrics being textile piece goods for use in embroidery; Fabrics being textile piece goods for use in manufacture; Fabrics being textile piece goods for use in patchwork; Fabrics being textile piece goods for use in tapestry; Fabrics being textile piece goods made of mixtures of fibres; Fabrics for use as linings in clothing; Fabrics for use in covering armchairs; Fabrics for the manufacture of furnishings; Fabrics for use in making diapers; Fabrics for manufacturing tents; Materials for soft furnishings; Marabouts [cloth]; Corduroy fabrics; Mixed fiber fabrics; Elastic yarn mixed fabrics; Worsted fabrics; Wool yarn fabrics; Regenerated fiber yarn fabrics; Semi-synthetic fiber fabrics; Fabrics of organic fibres, other than for insulation; Hemp yarn fabrics; Waste cotton fabrics; Fabrics made from synthetic threads; Fabrics woven from ceramic fibres, other than for insulation; Polymer coated fabrics; Fabrics covered with motifs to be embroidered; Fabrics for sale in kit form for making toy monsters; Fabrics for manufacturing garden furniture; Fabrics for use in the manufacture of exterior coverings for chairs; Loden cloth; Fabrics made from linen, other than for insulation; Linen cloth; Press fabrics all for use in the paper making industry; Press felts all for use in the paper making industry; Press felt; Sheets of sailcloth for screening; Linen lining fabric for shoes; Linens.

Goods made of textiles. The below goods are similar to a low degree to the opponent’s bed covers; table covers. When comparing these goods the nature can be considered the same (textile items), and they may be available through the same distribution channels, such as those selling textile items for household decoration.

Textile goods; Insecticide-treated mosquito nets; Coverings for furniture; Wall hangings; Labels of textile; Drapery; Brocade flags; Soft furnishings; Frieze [cloth]; Sponge cloths [textile piece goods]; Japanese ceremonial wrapping cloth (Fukusa); Japanese general wrapping cloth (Furoshiki); Handkerchiefs; Towels [textile] for kitchen use; Nap raised cloth; Handkerchiefs of textile; Covers for toilet lids of fabric; Banners of textile; Disposable cloths; Prayer cloth; Replacement seat covers [loose] for furniture; Protective loose covers for mattresses and furniture; Protective covers [dust sheets] for use in decorating; Chair backs [textile articles]; Dust sheets; Canopy covers; Furniture coverings (unfitted); Furniture coverings of textile; Toilet seat covers; Chair covers; Fitted toilet lid covers of fabric; Sofa covers; Bean bag covers; Loose covers made of textile materials for furniture; Loose covers for garden furniture; Covers of textile for water closets; Woven fabrics for furniture; Fitted toilet lid covers [made of fabric or fabric substitutes]; Unfitted fabric furniture covers; Bath linen; Kitchen and table linens; Bed clothes and blankets; Glass cloths [towels]; Towels of textile; Household linen, including face towels; Children's towels; Sanitary flannel; Towelling [textile]; Towelling coverlets; Turkish towel; Face cloths of towelling; Golf towels; Japanese cotton towels (tenugui); Bath towels; Disposable wash cloths; Face cloths; Bath linen, except clothing; Face flannels in the form of gloves; Cloths for removing make-up; Bath sheets; Hooded towels; Beach towels; Towels [textile] for the beach; Duvet covers; Quilts of towel; Towelling [textile] adapted for use in dispensers; Face towels; Face towels of textile; Mitts made of non-woven fabric for washing the body; Hand towels; Towels [textile] for use in connection with toddlers; Towels [textile] for use in connection with babies; Make-up removal cloths [textile], other than impregnated with cosmetics; Hand towels of textile; Towels of textile sold in pack form; Towels of textile featuring American football team logos; Make-up removal cloths [textile], other than impregnated with toilet preparations; Bath mitts; Cloths for washing the body [other than for medical use]; Cloths of woven textile material for washing the body [other than for medical use]; Cloths of non-woven textile material for washing the body [other than for medical use]; Bar cloths; Table runners; Textile smallwares [table linen]; Table runners not of paper; Disposable tablecloths of textile; Lace table mats not made of paper; Tea cloths; Kitchen towels; Kitchen linen; Bed linen and table linen; Fabric table toppers; Mats of linen; Drink coasters of table linen; Coasters [table linen]; Drink mats of table linen; Place mats, not of paper; Table linen; Table covers; Table covers of damask; Table covers of non-woven textile fabrics; Table linen, not of paper; Tablemats, not of paper; Napery of textile; Fabric table runners; Doilies of textile; Individual place mats made of textile; Table napkins of textile; Textile tablecloths; Textile flags used for place settings; Tablecloths, not of paper; Dish cloths; Household cloths for drying dishes; Dish towels for drying; Vinyl place mats; Oilcloth for use as tablecloths; Washing gloves; Crib canopies; Lap rugs; Tartan travelling rugs; Blankets for household pets; Receiving blankets; Children's blankets; Terry linen; Silk blankets; Disposable bedding of paper; Disposable bedding of textile; Bed blankets made of cotton; Bed blankets made of man-made fibres; Valanced bed covers; Valence linen; Bed linen made of non-woven textile material; Silk bed blankets; Fabric bed valances; Waterproof bed clothes; Infants' bed linen; Bed canopies; Bed warmer covers; Paper pillowcases; Duvets; Swags [curtains]; Pelmets; Ready made curtains of textiles; Ready made curtains; Lace curtains; Indoor and outdoor curtains; Valances [textile draperies]; Moquettes [curtains]; Fire-retardant textile shower curtains; Coverings for windows; Curtain linings; Pleated shades; Textiles in the form of window furnishings; Textile materials for use as window coverings; Curtain holders of textile material; Textile curtain pelmets; Vinyl curtains; Window covering products made of textile material; Pleated curtain; Shower curtains of textile; Curtains of textile.

Fabrics made of or containing plastic. These goods are similar to the opponent’s textile in the sense that they are complementary or in competition. The goods can coincide in manufacturers and distribution channels.

Substitutes for textile goods; Fabrics made from acrylic, other than for insulation; Fleece made from copolymers; Fleece made from polypropylene; Piece goods made of textile materials bonded with rubbers; Piece goods made of woven plastic material; Textile piece goods (Polyurethane coated -) for making waterproof clothing; Textile piece goods made of plastics materials.

Finished goods made of or with plastic. These goods are similar to the opponent’s bed covers, table covers given that the latter goods can also be made of plastic materials. The goods are complementary and they can be in competition. The goods can coincide in manufacturers and distribution channels.

Furniture coverings of plastic; Coverings of textile and of plastic for furniture (unfitted); Dinner mats of plastics material; Table covers of plastic; Bed sheets of plastic [not being incontinence sheets]; Curtains of plastic; Ready made curtains of plastics; Curtains made of plastics for use in shower baths; Shower curtains of plastic; Curtains of plastic.

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 found to be identical or at least similar are directed at the public at large as well as a professional public, as far as for example leather or textile material is concerned. The degree of attention is considered to be average.

The signs

(1) EUTM No 2 844 264

TORO

(2) EUTM No 13 389 739 and EUTM No 13 356 266

(3) EUTM No 8 310 534 and EUTM No 9 251 984

TORO

Earlier trade marks

Contested sign

As far as the earlier word mark (1) is concerned, the signs are identical.

Further comparison will only focus on the other earlier figurative marks.

The relevant territory is the European Union.

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

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

The common element is not meaningful in countries where Spanish, Italian and Portuguese are not spoken; consequently the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public which does not speak these languages and for whom the term is meaningless and its distinctiveness is normal.

It is worth noting from the outset that the earlier marks’ (3) dominant element is the image of a bull and the term ‘TORO’, which is on top in larger size than the term ‘OSBORNE’.

Visually, the signs coincide in ‘TORO’. They differ in the typeface of the earlier signs. They also differ in the element ‘OSBORNE’ of the earlier signs (3), which in any event is less dominant. The earlier signs (3) also differ in the bull image; however, 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).

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

Aurally, there is identity between the earlier signs (2) and the contested sign. The earlier marks (3) are aurally highly similar to the contested mark, given that the coincidence is based in the dominant element of the earlier marks.

Conceptually, a comparison is not possible between the earlier marks (2) and the contested mark, given that they are meaningless in the relevant territory.

The earlier marks (3) are conceptually not similar to the contested mark on account of the different concept transmitted by the bull image.

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

Distinctiveness of the earlier marks

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

The opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

Global assessment, other arguments and conclusion

As far as EUTM No 2 844 264 ‘TORO’ is concerned, the signs were found to be identical and some of the contested goods are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for the following goods:

Umbrellas and parasols; Saddlery, wallets Umbrellas; Golf umbrellas; Umbrellas for children; Japanese oiled-paper umbrellas (janome-gasa); Japanese paper umbrellas (karakasa); Rainproof parasols; Beach umbrellas [beach parasols]; Bags for umbrellas; Umbrella handles; Telescopic umbrellas; Parasols; Patio umbrellas; Combination walking sticks and umbrellas; Leather wallets; Briefcases and attache cases; Attache cases; Portfolio cases [briefcases]; Briefbags; Backpacks; Clutches [purses]; Purses; Purses, not of precious metal; Chain mesh purses; purses and wallets; Leather suitcases; Leather credit card wallets; Leather wallets; wallets; Suitcases; suitcases; Roller suitcases; Small suitcases; Wallets, not of precious metal; Card wallets [leatherware]; Wallets for attachment to belts; Wallets including card holders; Baby backpacks; Small purses; Small clutch purses; Credit card cases [wallets]; Wallets of precious metal; Wrist mounted purses; Coin purses, not of precious metal; Wallets; Multi-purpose purses.

The rest of the goods are identical or similar (to different degrees) to those of the other earlier marks. These earlier marks either consist of or include in a dominant position the contested mark. The differences in the earlier marks’ typeface, bull image or the term ‘OSBORNE’ cannot offset the fact that the contested mark merely consist of the earlier mark’s only or dominant verbal element.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the part of the public not speaking Spanish, Italian or Portuguese and therefore the opposition is partly well- founded on the basis of the opponent’s European Union trade mark registrations. 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 found to be identical or similar, even if only to a low degree, to those of the earlier trade marks.

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

For the sake of completeness, it must be mentioned that, in relation to the dissimilar goods, the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the goods are obviously not identical.

The opponent also based its opposition on European Union trade mark application No 14 194 542 in respect of goods in Class 20. Since this mark is identical to one European Union trade mark registration which has been compared and cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Francesca DRAGOSTIN

Marianna KONDAS

Julie GOUTARD

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.

TORO | Decision 2783325

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