OPPOSITION No B 2 615 469

Wal-Mart Stores, Inc., 702 S.W. 8th Street, Bentonville, Arkansas 72716, United States of America (opponent), represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax, West Yorkshire HX1 2HY, United Kingdom (professional representative)

a g a i n s t

Penta CZ s.r.o., Povážská 266, 386 01 Strakonice - Přední Ptákovice, Czech Republic (applicant), represented by Jiří Macek, Sázavská 16, 120 00 Praha 2‑Vinohrady, Czech Republic (professional representative).

On 03/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 615 469 is partially upheld, namely for the following contested goods:

Class 7: Agricultural tools and garden tools, motor driven, garden tools, pressure washers, mowing machines, suction machines, lawn mowers, soil and turf grass trimmers, chain saws, mechanical cutting apparatus, electric shears for garden and household.

Class 8: Instruments and tools with manual drive, knives, forks, spoons, agricultural hand tools, hand lawn mowers, hand-held device for aerating lawns and planting, hand mowers, hand tools for gardening, hand saws, shears for garden and household, pliers, shovels.

Class 11: Devices for lighting, irrigation spray nozzles, irrigation equipment, lights, lamps, lights especially garden, including lights for ponds, lamps, equipment for water treatment, filters, parts of the aforesaid goods, ventilators.

Class 12: Trolleys.

Class 20: Valves, the aforesaid goods mainly of metal, handles made of wood and plastic; furniture, garden furniture, mirrors, frames.

Class 21: Tools and containers for household and kitchen.

2. European Union trade mark application No 14 118 401 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 118 401. The opposition is based on United Kingdom registrations No 3 009 951 and No 2 467 445, and on European Union trade mark registration No 10 212 702. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

SUBSTANTIATION of United Kingdom trade mark registrations No 3 009 951 for the figurative mark and No 2 467 445 for the figurative mark

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 notice of opposition was not accompanied by any evidence as regards the earlier trade marks on which the opposition is based.

On 04/12/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after an extension, on 09/06/2016.

The opponent did not submit any evidence concerning the substantiation of the abovementioned earlier trade marks.

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 these earlier marks.

Therefore, the present assessment will proceed as regards the other earlier mark claimed as basis of the opposition, namely European Union trade mark registration No 10 212 702.

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.

1. The goods and services

The goods and services on which the opposition is based are the following (after a declaration under Article 28(8) EUTMR of 08/04/2016):

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Fire-extinguishing apparatus; abacuses; accounting machines; accumulators, electric; acid hydrometers; acidimeters for batteries; acoustic [sound] alarms / sound alarms; acoustic conduits; acoustic couplers; actinometers; adding machines; aerials / antennas; aerometers; air analysis apparatus; alarm bells, electric; alarms; alcoholmeters; alidades; altimeters; ammeters; amplifiers; amplifying tubes / amplifying valves; amusement apparatus adapted for use with an external display screen or monitor; anemometers; animated cartoons; anode batteries / high tension batteries; anodes; answering machines; anti-dazzle shades / anti-glare visors; anti-glare glasses; anti-interference devices [electricity]; anti-theft warning apparatus; anticathodes; apertometers [optics]; electric arc cutting apparatus; electric arc welding apparatus; armatures [electricity]; asbestos gloves for protection against accidents; asbestos clothing for protection against fire; asbestos screens for firemen; apparatus and instruments for astronomy; electric devices for attracting and killing insects; audio-- and video-receivers; audiovisual teaching apparatus; automated teller machines [ATM]; azimuth instruments; balances [steelyards] / lever scales [steelyards] / steelyards [lever scales]; balancing apparatus; bar code readers; barometers; batteries, electric, for vehicles / accumulators, electric, for vehicles; batteries for lighting; batteries for pocketlamps / batteries for pocket lamps; batteries, electric; battery jars / accumulator jars; battery boxes / accumulator boxes; battery chargers; beacons, luminous; bells [warning devices]; betatrons; binoculars; blueprint apparatus; boiler control instruments; branch boxes [electricity]; breathing apparatus for underwater swimming; breathing apparatus, except for artificial respiration; bullet-proof waistcoats [vests (Am.)] / bullet-proof vests (Am.) / bullet-proof waistcoats; buzzers, electric; buzzers; cabinets for loudspeakers; cables, electric; calculating disks; calculating machines; calibrating rings; calipers; camcorders; cameras [photography]; capacity measures; capillary tubes; carpenters’ rules; carriers for dark plates [photography]; cases especially made for photographic apparatus and instruments; cases fitted with dissecting instruments [microscopy]; cash registers; cassette players; cathodes; cathodic anti-corrosion apparatus; cell switches [electricity] / reducers [electricity]; centering apparatus for photographic transparencies; apparatus for changing record player needles; chargers for electric batteries; apparatus to check franking / apparatus to check stamping mail; chemistry apparatus and instruments; chips [integrated circuits]; choking coils [impedance]; chromatography apparatus for laboratory use; chronographs [time recording apparatus]; cigar lighters for automobiles; cinematographic cameras; cinematographic film, exposed; circuit closers; circuit breakers; cleaning apparatus for phonograph records / cleaning apparatus for sound recording discs; clothing for protection against accidents, irradiation and fire; clothing for protection against fire; clothing especially made for laboratories; coaxial cables; coils, electric; collectors, electric; electric apparatus for commutation; commutators; compact discs [audio-video]; compact discs [read-only memory]; compact disc players; comparators; compasses [measuring instruments]; computer memories; computer programmes [programs], recorded; computer keyboards; computer operating programs, recorded / computer operating programs recorded; computer peripheral devices; computer software, recorded; computer programs [downloadable software]; computer game programs; computers / laptop computers; condensers [capacitors] / capacitors; conductors, electric; connections for electric lines; connectors [electricity]; contact lenses; contacts, electric, of precious metal; contacts, electric; containers for microscope slides; containers for contact lenses; control panels [electricity]; converters, electric; copper wire, insulated; correcting lenses [optics]; cosmographic instruments; counterfeit [false] coin detectors / false coin detectors; counters / meters; couplers [data processing equipment]; couplings, electric / connections, electric; covers for electric outlets; crucibles [laboratory] / cupels [laboratory]; current rectifiers; cyclotrons; darkroom lamps [photography]; darkrooms [photography]; data processing apparatus; decompression chambers; decorative magnets; demagnetizing apparatus for magnetic tapes; densimeters; densitometers; metal detectors for industrial or military purposes; detectors; diagnostic apparatus, not for medical purposes; diaphragms [acoustics]; diaphragms for scientific apparatus; diaphragms [photography]; dictating machines; diffraction apparatus [microscopy]; directional compasses; discharge tubes, electric, other than for lighting / electric discharge tubes, other than for lighting; disk drives for computers; disks, magnetic; distance measuring apparatus; distance recording apparatus / apparatus for recording distance; distillation apparatus for scientific purposes; distribution boxes [electricity]; distribution machines, automatic / vending machines; distribution boards [electricity]; distribution consoles [electricity]; divers’ apparatus; divers’ masks; diving suits; DNA chips; dog whistles; door openers, electric; door closers, electric; electric door bells; dosage dispensers / dosimeters; drainers for use in photography / photographic racks; dressmakers’ measures; drying racks [photography]; drying apparatus for photographic prints; ducts [electricity]; DVD players; dynamometers; ear plugs for divers; ear plugs; editing appliances for cinematographic films / apparatus for editing cinematographic film; egg timers [sandglasses]; egg-candlers; electricity conduits; materials for electricity mains [wires, cables]; electrified rails for mounting spot lights; electrified fences; electro-dynamic apparatus for the remote control of railway points; electro-dynamic apparatus for the remote control of signals; electrolysers; electromagnetic coils; electronic pens [visual display units]; electronic agendas; electronic pocket translators; electronic tags for goods; electronic notice boards; electronic publications, downloadable; electroplating apparatus; elevator operating apparatus / lift operating apparatus; encoded cards, magnetic; encoded identification bracelets, magnetic; enlarging apparatus [photography]; epidiascopes; ergometers; exposure meters [light meters]; extinguishers / fire extinguishing apparatus; eyeglass chains / pince-nez chains; eyeglass cords / pince-nez cords; eyeglass cases / pince-nez cases; eyepieces; instruments containing eyepieces; eyeshades; facsimile machines; apparatus for fermentation [laboratory apparatus]; fibre [fiber (Am.)] optic cables; film cutting apparatus; films, exposed; filters for respiratory masks; filters [photography]; filters for ultraviolet rays, for photography; fire alarms; fire beaters; fire escapes; fire hose nozzles; fire engines; fire boats; fire blankets; flash-bulbs [photography]; flashing lights [luminous signals] / blinkers [signalling lights]; flashlights [photography]; flat irons, electric; floppy disks; fluorescent screens; fog signals, non-explosive; food analysis apparatus; frames for photographic transparencies; frequency meters; fuel dispensing pumps for service stations; self-regulating fuel pumps; furnaces for laboratory experiments / ovens for laboratory experiments; furniture especially made for laboratories; fuse wire / wires of metal alloys [fuse wire]; fuses; galena crystals [detectors]; galvanic cells; galvanic batteries; galvanizing apparatus; galvanometers; apparatus for games adapted for use with an external display screen or monitor; garments for protection against fire; gas testing instruments; gasoline pumps for service stations / petrol pumps for service stations; gasoline gauges / petrol gauges; gasometers; coin-operated gates for car parks or parking lots / coin-operated gates for car parks; gauges; glass covered with an electrical conductor; glazing apparatus for photographic prints; gloves for protection against accidents; gloves for divers; gloves for protection against X-rays for industrial purposes; goggles for sports; grids for batteries; hair-curlers, electrically heated; hands free kits for phones; head cleaning tapes [recording]; headphones; heat regulating apparatus; heliographic apparatus; hemline markers; high-frequency apparatus; holders for electric coils; holograms; horns for loudspeakers; hydrometers; hygrometers; identification threads for electric wires; identification sheaths for electric wires; identity cards, magnetic; igniting apparatus, electric, for igniting at a distance / electric apparatus for remote ignition; incubators for bacteria culture; indicators [electricity]; automatic indicators of low pressure in vehicle tires [tyres] / automatic indicators of low pressure in vehicle tyres / automatic indicators of low pressure in vehicle tires; inductors [electricity]; integrated circuits; integrated circuit cards [smart cards] / smart cards [integrated circuit cards]; intercommunication apparatus; interfaces for computers; inverters [electricity]; invoicing machines; ionisation apparatus, not for the treatment of air; jigs [measuring instruments]; juke boxes, musical / coin-operated musical automata [juke boxes]; juke boxes for computers; junction boxes [electricity]; junction sleeves for electric cables; knee-pads for workers; laboratory trays; lactodensimeters; lactometers; lasers, not for medical purposes; lens hoods; lenses for astrophotography; letter scales; levelling staffs [surveying instruments] / rods [surveying instruments]; levelling instruments; levels [instruments for determining the horizontal]; life saving apparatus and equipment; life buoys; life jackets; life belts; life-saving rafts; light dimmers [regulators], electric / light regulators [dimmers], electric; light-emitting electronic pointers; lighting ballasts; lightning conductors [rods] / lightning conductors / lightning arresters; limiters [electricity]; locks, electric; logs [measuring instruments]; electric loss indicators; loudspeakers; magic lanterns; magnetic tapes; magnetic wires; magnetic data media; magnetic encoders; magnetic tape units for computers; magnets; magnifying glasses [optics]; marine compasses; marine depth finders; marking gauges [joinery]; marking buoys; masts for wireless aerials; mathematical instruments; measures; measuring apparatus; measuring devices, electric; measuring glassware / graduated glassware; measuring instruments; apparatus for measuring the thickness of skins; measuring spoons; mechanisms for coin-operated apparatus; mechanisms for counter-operated apparatus; megaphones; mercury levels; meteorological balloons; meteorological instruments; metronomes; micrometer screws for optical instruments; micrometers / micrometer gauges; microphones; microprocessors; microscopes; microtomes; milage recorders for vehicles / kilometer recorders for vehicles; mirrors for inspecting work; mirrors [optics]; modems; money counting and sorting machines; monitoring apparatus, electric; monitors [computer hardware]; monitors [computer programs]; motor fire engines; mouse [data processing equipment]; mouse pads; nautical apparatus and instruments; naval signalling apparatus; navigation apparatus for vehicles [on-board computers]; navigational instruments; needles for record players / styli for record players; neon signs; nets for protection against accidents; nose clips for divers and swimmers; notebook computers; objectives [lenses] [optics]; observation instruments; octants; ohmmeters; optical lanterns / optical lamps; optical lenses; optical goods; optical apparatus and instruments; optical glass; optical fibers [fibres] [light conducting filaments] / light conducting filaments [optical fibers [fibres]]; optical condensers; optical character readers; optical data media; optical discs; oscillographs; oxygen transvasing apparatus; ozonisers [ozonators]; parking meters; particle accelerators; pedometers; peepholes [magnifying lenses] for doors; periscopes; phonograph records / sound recording discs; photocopiers [photographic, electrostatic, thermic]; photometers; phototelegraphy apparatus; photovoltaic cells; apparatus and instruments for physics; pince-nez mountings / eyeglass frames; pince-nez / eyeglasses; pipettes; plane tables [surveying instruments]; planimeters; plates for batteries; plotters; plumb bobs; plumb lines; pocket calculators; polarimeters; portable telephones; postage stamp meters; precision measuring apparatus; precision balances; pressure indicator plugs for valves; pressure gauges / manometers; pressure measuring apparatus; pressure indicators; printed circuits; printers for use with computers; prisms [optics]; probes for scientific purposes; processors [central processing units] / central processing units [processors]; projection screens; projection apparatus; protection devices for personal use against accidents; protection devices against X-rays [Roentgen rays], not for medical purposes / protection devices against X-rays, not for medical purposes / protection devices against Roentgen rays, not for medical purposes; protective suits for aviators; protective helmets; protective masks; protective helmets for sports; protractors [measuring instruments]; punched card machines for offices; push buttons for bells; pyrometers; quantity indicators; radar apparatus; radio pagers; radiological apparatus for industrial purposes; radiology screens for industrial purposes; radios; radiotelegraphy sets; radiotelephony sets; railway traffic safety appliances; range finders / telemeters; readers [data processing equipment]; record players; reflecting discs for wear, for the prevention of traffic accidents / reflecting discs, for wear, for the prevention of traffic accidents; refractometers; refractors; regulating apparatus, electric; relays, electric; electric installations for the remote control of industrial operations; remote control apparatus; make-up removing appliances, electric; resistances, electric; respirators for filtering air; respiratory masks, other than for artificial respiration / respirators, other than for artificial respiration; resuscitation mannequins [teaching apparatus]; retorts; retorts’ stands; revolution counters; rheostats; riding helmets; road signs, luminous or mechanical; rods for water diviners; roentgen apparatus not for medical purposes; rulers [measuring instruments]; rules [measuring instruments]; saccharometers; safety nets / life nets; safety tarpaulins; safety restraints, other than for vehicle seats and sports equipment; salinometers; satellite navigational apparatus; satellites for scientific purposes; scales; scanners [data processing equipment]; screens [photography]; screens for photoengraving; screw-tapping gauges; electrical apparatus for sealing plastics [packaging]; semi-conductors; sextants; sheaths for electric cables; shoes for protection against accidents, irradiation and fire; shutter releases [photography]; shutters [photography]; sighting telescopes for firearms; signal bells; signal lanterns; signalling panels, luminous or mechanical; signalling whistles; signalling buoys; signals, luminous or mechanical; mechanical signs; signs, luminous; simulators for the steering and control of vehicles; sirens; slide calipers; slide projectors / transparency projection apparatus; slide-rules; slope indicators / clinometers / gradient indicators / inclinometers; smoke detectors; sockets, plugs and other contacts [electric connections] / plugs, sockets and other contacts [electric connections]; socks, electrically heated; solar batteries; solderers’ helmets; soldering apparatus, electric / welding apparatus, electric; soldering irons, electric; solenoid valves [electromagnetic switches]; sonars; sound recording carriers; sound recording strips; sound transmitting apparatus; sound recording apparatus; sound reproduction apparatus; sound locating instruments; sounding lines; sounding apparatus and machines; sounding leads; spark-guards; speaking tubes; spectacle glasses; spectacle frames; spectacle cases; spectacles [optics]; spectrograph apparatus; spectroscopes; speed checking apparatus for vehicles; speed indicators; speed measuring apparatus [photography]; speed regulators for record players; spherometers; spirit levels; spools [photography]; sprinkler systems for fire protection; stage lighting regulators; stands for photographic apparatus; starter cables for motors; steering apparatus, automatic, for vehicles; personal stereos; stereoscopes; stereoscopic apparatus; stills for laboratory experiments; sulphitometers; sunglasses; surveying instruments; surveying chains; surveying apparatus and instruments; surveyors’ levels; swimming belts; swimming jackets; switchboards; switchboxes [electricity]; switches, electric; tachometers; tape recorders; taximeters; teaching apparatus; teeth protectors; telegraph wires; telegraphs [apparatus]; telephone receivers; telephone apparatus; telephone transmitters; telephone wires; teleprinters / teletypewriters; teleprompters; telerupters; telescopes; coin-operated mechanisms for television sets; television apparatus; temperature indicators; terminals [electricity]; test tubes; material testing instruments and machines; testing apparatus not for medical purposes; theft prevention installations, electric; theodolites; thermionic valves [radio]; thermionic lamps and tubes; thermometers, not for medical purposes; thermostats; thermostats for vehicles; thread counters / waling glasses; ticket dispensers; time switches, automatic; time recording apparatus; time clocks [time recording devices]; tone arms for record players; totalizators; traffic-light apparatus [signalling devices] / traffic- light apparatus [signalling devices]; transformers [electricity]; transistors [electronic]; transmitters of electronic signals; transmitters [telecommunication]; transmitting sets [telecommunication]; transparencies [photography] / slides [photography]; tripods for cameras; turnstiles, automatic; urinometers; vacuum gauges; vacuum tubes [radio]; variometers; vehicle radios; vehicle breakdown warning triangles; verniers; video recorders; video cassettes; video game cartridges; video screens; video telephones; videotapes; viewfinders, photographic; viscosimeters; voltage regulators for vehicles; voltage surge protectors; voltmeters; voting machines; wafers [silicon slices]; walkie-talkies; washing trays [photography]; water level indicators; water wings / floats for bathing and swimming; wavemeters; weighbridges; weighing machines; weighing apparatus and instruments; weights; welding electrodes; electric welding apparatus; whistle alarms; wind socks for indicating wind direction; wire connectors [electricity]; wires, electric; word processors; workmen’s protective face-shields; wrist rests for use with computers; X-ray films, exposed / roentgen films, exposed; X-ray photographs, other than for medical purposes; X-rays producing apparatus and installations, not for medical purposes; x-rays tubes not for medical purposes; with the exclusion of appliances for measuring the thickness of leather.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments; agates; alarm clocks; alloys of precious metal; amulets [jewellery, jewelry (Am.)]; anchors [clock and watch making]; atomic clocks; badges of precious metal; barrels [clock and watch making]; boxes of precious metal; bracelets [jewellery, jewelry (Am.)]; brooches [jewellery, jewelry (Am.)]; busts of precious metal; cases for clock- and watchmaking; cases for watches [presentation]; chains [jewellery, jewelry (Am.)]; charms [jewellery, jewelry (Am.)] / trinkets [jewellery, jewelry (Am.)]; chronographs [watches]; chronometers; chronometrical instruments; chronoscopes; clock hands [clock and watch making]; clock cases; clocks; clockworks; cloisonné jewellery [jewelry (Am.)]; coins; control clocks [master clocks] / master clocks; copper tokens; cuff links; dials [clock and watch making]; diamonds; earrings; figurines [statuettes] of precious metal / statuettes of precious metal; gold, unwrought or beaten; gold thread [jewellery, jewelry (Am.)]; hat ornaments of precious metal; ingots of precious metals; iridium; ivory [jewellery, jewelry (Am.)]; jet, unwrought or semi-wrought; jewellery of yellow amber / jewelry of yellow amber; jewellery / jewelry; jewellery cases [caskets] / jewelry cases [caskets]; key rings [trinkets or fobs]; medallions [jewellery, jewelry (Am.)]; medals; movements for clocks and watches; necklaces [jewellery, jewelry (Am.)]; olivine [gems]; ornamental pins; ornaments of jet; ornaments [jewellery, jewelry (Am.)]; osmium; palladium; paste jewellery [costume jewelry (Am.)] / paste jewellery / paste jewelry [costume jewelry]; pearls made of ambroid [pressed amber]; pearls [jewellery, jewelry (Am.)]; pendulums [clock and watch making]; pins [jewellery, jewelry (Am.)]; platinum [metal]; precious metals, unwrought or semi-wrought; precious stones; rhodium; rings [jewellery, jewelry (Am.)]; ruthenium; semi-precious stones; shoe ornaments of precious metal; silver thread; silver ornaments; silver, unwrought or beaten; spinel [precious stones]; spun silver [silver wire]; statues of precious metal; stopwatches; sundials / sun dials; threads of precious metal [jewellery, jewelry (Am.)] / wire of precious metal [jewellery, jewelry (Am.)]; tie clips; tie pins; watch bands / straps for wristwatches / watch straps; watch chains; watch springs; watch glasses / watch crystals; watch cases; watches; works of art of precious metal; wristwatches; with the exclusion of clocks and watches, electric.

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; animal skins / pelts; attaché cases; bags for climbers; bags for campers; bags [envelopes, pouches] of leather, for packaging / envelopes, of leather, for packaging / pouches, of leather, for packaging; bags for sports; bands of leather; beach bags; bits for animals [harness]; blinkers [harness] / blinders [harness]; boxes of leather or leather board; boxes of vulcanised fibre; bridles [harness]; bridoons; briefcases; butts [parts of hides]; canes / walking sticks; card cases [notecases]; cases, of leather or leatherboard; casings, of leather, for springs / casings, of leather, for plate springs; cat o’ nine tails; cattle skins; chain mesh purses; chamois leather, other than for cleaning purposes / skins of chamois, other than for cleaning purposes; chin straps, of leather; collars for animals; coverings of skins [furs]; covers for animals / clothing for pets; covers for horse-saddles / saddle cloths for horses; curried skins; dog collars; fastenings for saddles; frames for umbrellas or parasols; fur / fur-skins; furniture coverings of leather; game bags [hunting accessories]; garment bags for travel ; gut for making sausages; halters / head-stalls; handbag frames; handbags; harness straps / harness traces; harness for animals; harness fittings; hat boxes of leather; haversacks; horse collars; horse blankets; horseshoes; imitation leather; key cases [leatherware]; kid; knee-pads for horses; leather leashes; leather leashes / leather leads / leather laces; leather straps / leather thongs; leather, unworked or semi-worked; leather twist / leather thread; leatherboard; moleskin [imitation of leather]; mountaineering sticks / alpenstocks; music cases; muzzles; net bags for shopping; nose bags [feed bags]; pads for horse saddles; parasols; pocket wallets; purses; reins; riding saddles; rucksacks / backpacks; saddle trees; saddlery; school bags / school satchels; shopping bags; shoulder belts [straps] of leather / bandoliers / leather shoulder straps / leather shoulder belts; sling bags for carrying infants; slings for carrying infants; stirrup leathers; parts of rubber for stirrups; stirrups; straps for soldiers’ equipment; straps of leather [saddlery]; straps for skates; suitcase handles; suitcases; tool bags of leather, empty; traces [harness]; travelling trunks; travelling bags; travelling sets [leatherware]; trimmings of leather for furniture / leather trimmings for furniture; trunks [luggage]; umbrella rings; umbrella or parasol ribs; umbrella sticks; umbrella covers; umbrella handles; umbrellas; valises; valves of leather; vanity cases, not fitted; walking stick seats; walking stick handles / walking cane handles; wheeled shopping bags; whips; with the exclusion of gold beaters’ skin / goldbeaters’ skin.

Class 25: Clothing, footwear, headgear; aprons [clothing]; ascots; babies’ pants; babies’ diapers of textile / babies’ napkins of textile; bandanas [neckerchiefs]; bath sandals; bath slippers; bath robes; bathing caps; bathing trunks / bathing drawers; bathing suits / swimsuits; beach clothes; beach shoes; belts [clothing]; berets; bibs, not of paper; boas [necklets]; bodices [lingerie]; boot uppers; boots; boots for sports; brassieres; breeches for wear; camisoles; cap peaks / sun visors / visors [hatmaking]; caps [headwear]; chasubles; clothing; clothing for gymnastics; clothing of imitations of leather; clothing of leather; coats; collar protectors; collars [clothing] / shoulder wraps; combinations [clothing]; corselets; corsets [underclothing]; cuffs / wristbands [clothing]; cyclists’ clothing; detachable collars; dress shields; dressing gowns; ear muffs [clothing]; esparto shoes or sandals; fishing vests; fittings of metal for shoes and boots / iron fittings for boots / iron fittings for shoes; football shoes / football boots; footmuffs, not electrically heated; footwear; footwear uppers; frocks; fur stoles; furs [clothing]; gabardines [clothing]; galoshes / goloshes; garters; girdles; gloves [clothing]; gymnastic shoes; half-boots; hat frames [skeletons]; hats; headbands [clothing]; headgear for wear; heelpieces for stockings / heel pieces for stockings; heelpieces for boots and shoes / heelpieces for boots / heelpieces for shoes; heels; hoods [clothing]; hosiery; jackets [clothing]; jerseys [clothing]; jumpers [shirt fronts] / chemisettes [shirt fronts]; knitwear [clothing]; lace boots; layettes [clothing]; leggings; liveries; maniples; mantillas; masquerade costumes; mitres [hats] / miters [hats]; mittens; money belts [clothing]; motorists’ clothing; muffs [clothing]; neckties; non-slipping devices for boots and shoes / non-slipping devices for boots / non-slipping devices for shoes; outerclothing; overalls / smocks; overcoats / top coats / topcoats; pants / drawers [clothing]; paper clothing; paper hats [clothing]; parkas; pelerines; pelisses; petticoats; pocket squares; pockets for clothing; pullovers; pyjamas / pajamas (Am.); ready-made clothing; ready-made linings [parts of clothing]; sandals; saris; sashes for wear; scarves / scarfs; shawls; shirt fronts; shirt yokes; shirts; shoes; shower caps; singlets / sports jerseys; ski boots; skirts; skull caps; sleep masks; slippers; slips [undergarments]; sock suspenders; socks; inner soles; soles for footwear; spats / gaiters; sports shoes; stocking suspenders; stockings; studs for football boots [shoes]; stuff jackets [clothing]; suits; suspenders / braces for clothing [suspenders]; sweat-absorbent underclothing [underwear] / anti-sweat underwear / anti-sweat underclothing; sweaters; teddies [undergarments]; tee-shirts; tights; tips for footwear; togas; top hats; trouser straps / gaiter straps; trousers; turbans; underpants; underwear / body linen [garments] / underclothing; uniforms; veils [clothing]; waistcoats / vests; waterproof clothing; welts for boots and shoes / welts for boots / welts for shoes; wet suits for water-skiing; wimples; wooden shoes; with the exclusion of sweat absorbent stockings.

Class 26: Lace and embroidery, ribbons and braid; Buttons, hooks and eyes, pins and needles; Artificial flowers; artificial fruit; artificial garlands; badges for wear, not of precious metal; barrettes [hair-slides]; belt clasps / belt clasp; binding needles; birds’ feathers [clothing accessories]; blouse fasteners / dress body fasteners; bodkins; bows for the hair; boxes for needles; braids; brassards; brooches [clothing accessories]; buckles [clothing accessories]; buttons; chenille [passementerie]; collar supports; competitors’ numbers; cords for clothing; cords for rimming, for clothing; corset busks / whalebones for corsets; darning needles; darning lasts; edgings for clothing; elastic ribbons; embroidering crochet hooks; embroidery / fancy goods [embroidery]; expanding bands for holding sleeves; eyelets for clothing; false beards; false hair; false hems; false moustaches; fastenings for clothing / dress fastenings; fastenings for suspenders / fastenings for braces; feathers [clothing accessories]; festoons [embroidery]; frills [lacework]; frills for clothing; fringes; gold embroidery; haberdashery, except thread; hair bands; hair grips [slides] / slides [hair grips]; hair curlers, other than hand implements, non-electric; hair ornaments; hair curling pins; hair pins; hair nets; hair colouring caps / hair coloring caps; hair curling papers; hat ornaments, not of precious metal; heat adhesive patches for repairing textile articles; heat adhesive patches for decoration of textile articles [haberdashery]; hook and pile fastening tapes; hooks [haberdashery]; hooks for corsets; knitting needles; lace for edgings; lace trimmings / passementerie; letters for marking linen; monogram tabs for marking linen / numerals or letters for marking linen; needle cushions; needle cases; needles; needles for wool combing machines; numerals for marking linen; ornamental novelty badges [buttons]; ostrich feathers [clothing accessories]; picot [lace]; pin cushions; pins, other than jewellery [jewelry (Am.)]; plaited hair / tresses of hair; prize ribbons; reins for guiding children; ribbons [haberdashery]; rosettes [haberdashery]; rug hooks; saddlers’ needles; sewing needles; sewing boxes; sewing thimbles; shoe fasteners; shoe hooks; shoe laces; shoe ornaments, not of precious metal; shoe eyelets; shoe buckles; shoemakers’ needles; shoulder pads for clothing; shuttles for making fishing nets; silver embroidery; skirt flounces; slide locks for bags / zip fasteners for bags; snap fasteners; spangles for clothing; tapes for curtain headings; tassels [haberdashery]; tea cosies; thread of metal for embroidery; tinsels [trimmings for clothing] / orsedew [trimmings for clothing]; top-knots [pompoms]; toupees; trimmings for clothing; trouser clips for cyclists; wigs; woollen laces; wreaths of artificial flowers; zip fasteners / slide fasteners [zippers] / zippers; with the exclusion of mica spangles.

Class 35: Advertising; business management; business administration; office functions; retail, wholesale, and online retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools, optical tools, cameras, domestic electrical and electronic equipment, including white goods, jewellery, clocks, watches, publications, luggage, furnishing, haberdashery, toys and games, sport equipment, foodstuffs and drinks, chemical substances for preserving foodstuffs, tanning substances, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, candles and wicks for lighting, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, hand tools and implements (hand-operated), razors, scientific, photographic, cinematographic, optical, weighing measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopedic articles, suture materials, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, precious metals and their alloys and goods in precious metals or coated therewith, precious stones, horological and chronometric instruments, paper, cardboard and goods made from these materials, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites, instructional and teaching material, plastic materials for packaging, household or kitchen utensils and containers, combs and sponges, brushes, paint brushes, brush-making materials, articles for cleaning purposes, steelwool, glassware, porcelain and earthenware, strings, yarns and threads, for textile use, textiles and textile goods, bed and table covers, clothing, footwear, headgear, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings, games and playthings, gymnastic and sporting articles, decorations for Christmas trees, meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, fruit sauces, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, agricultural, horticultural and forestry products and grains, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages, alcoholic beverages, matches; rental of advertising space; administrative processing of purchase orders; advertising / publicity; advertising agencies / publicity agencies; rental of advertising space; advertising by mail order; rental of advertising time on communication media; auctioneering; auditing; bill-posting / outdoor advertising; book-keeping / accounting; business management assistance; business inquiries; business management and organization consultancy; business management consultancy; business appraisals; business investigations; business organization consultancy; business research; advisory services for business management; professional business consultancy; business information; business management of hotels; business management of performing artists; commercial information agencies; commercial or industrial management assistance; commercial information and advice for consumers [consumer advice shop]; commercial administration of the licensing of the goods and services of others; compilation of information into computer databases; compilation of statistics; computerized file management; cost price analysis; data search in computer files for others; demonstration of goods; direct mail advertising; dissemination of advertising matter; distribution of samples; document reproduction; drawing up of statements of accounts; economic forecasting; efficiency experts; employment agencies; evaluation of standing timber / valuation of standing timber; import-export agencies; invoicing; layout services for advertising purposes; on-line advertising on a computer network; marketing studies; marketing research; modelling for advertising or sales promotion; news clipping services; arranging newspaper subscriptions for others; office machines and equipment rental; opinion polling; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes / organization oftrade fairs for commercial or advertising purposes; outsourcing services [business assistance]; payroll preparation; personnel management consultancy; personnel recruitment; photocopying; rental of photocopying machines; presentation of goods on communication media, for retail purposes; price comparison services; procurement services for others [purchasing goods and services for other businesses]; psychological testing for the selection of personnel; public relations; publication of publicity texts; publicity columns preparation; publicity material rental; radio advertising / radio commercials; relocation services for businesses; sales promotion for others; secretarial services; shop window dressing; shorthand; sponsorship search; arranging subscriptions to telecommunication services for others; systemization of information into computer databases; tax preparation; telephone answering for unavailable subscribers; television advertising / television commercials; transcription; typing; updating of advertising material; rental of vending machines; word processing; writing of publicity texts; with the exclusion of grading of wool / evaluation of wool.

The contested goods are the following:

Class 7: Agricultural tools and garden tools, motor driven, garden tools, garden engines (except for land vehicles), compressors, pressure washers, mowing machines, suction machines, lawn mowers, motor driven apparatus for aerating lawns, soil and turf grass trimmers, chain saws, mechanical cutting apparatus, electric shears for garden and household, motor crushers, pumps, water pumps, pond pumps, water pumps for household filters to machines or engines of the above goods, clamping machines, aerators.

Class 8: Instruments and tools with manual drive, knives, forks, spoons, agricultural hand tools, hand lawn mowers, hand-held device for aerating lawns and planting, hand mowers, hand tools for gardening, hand saws, shears for garden and household, pliers, shovels.

Class 11: Devices for lighting, irrigation spray nozzles, irrigation equipment, lights, lamps, lights especially garden, including lights for ponds, lamps, equipment for water treatment, filters, parts of the aforesaid goods, ventilators.

Class 12: Trolleys.

Class 20: Furniture, garden furniture, mirrors, frames, hose reels, valves, connecting pieces for pipes and hoses, the aforesaid goods mainly of metal, waste containers especially of metal, containers and vessels, their closures and handles and holders for these products, handles (metallic) for agricultural hand tools and garden equipment, handles made of wood and plastic.

Class 21: Tools and containers for household and kitchen.

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 ‘including’, ‘especially’ and ‘mainly’, used in the parties’ lists of goods and services, 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 a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Contested goods in Class 7

Retail services concerning the sale of particular goods are similar to a low degree to those 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 agricultural tools and garden tools, motor driven, garden tools; mechanical cutting apparatus are similar to a low degree to the opponent’s retail services connected with the sale of hand tools in Class 35, as hand tools are small tools held in the hand, which might be hand operated or motor driven, that are included in or overlap with agricultural tools and garden tools.

The contested pressure washers; mowing machines, suction machines, lawn mowers, soil and turf grass trimmers; chain saws; electric shears for garden and household are similar to a low degree to the opponent’s retail services connected with the sale of domestic electrical equipment in Class 35, as that equipment includes the applicant’s goods.

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.

The contested garden engines (except for land vehicles), compressors, motor driven apparatus for aerating lawns, motor crushers, pumps, water pumps, pond pumps, water pumps for household filters to machines or engines of the above goods, clamping machines, aerators are not identical to the goods that are the subject of the opponent’s retail services in Class 35. These goods are not machines for household use, domestic electrical equipment, hand tools and implements, etc. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Therefore, those goods are dissimilar to the opponent’s services in Class 35.

Moreover, these contested goods also have nothing relevant in common with the opponent’s remaining goods in Class 9 (which are mainly scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus), Class 14 (which are precious metals and their alloys and goods in precious metals or coated therewith; jewellery, precious stones; horological and chronometric instruments), Class 18 (which are mainly 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 and parasols; walking sticks; whips, harness and saddlery), Class 25 (which are mainly clothing, headwear, footwear) and Class 26 (which are mainly lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers). These goods have different natures, purposes and methods of use. They are neither complementary nor in competition with each other. Furthermore, they are not produced by the same undertakings, are not distributed through the same distribution channels and target different relevant publics.

Contested goods in Class 8

According to the principles on similarity between retail services concerning the sale of particular goods and those particular goods, set out above, the contested instruments and tools with manual drive, agricultural hand tools, hand lawn mowers, hand-held device for aerating lawns and planting, hand mowers, hand tools for gardening, hand saws, shears for garden and household, pliers, shovels are similar to a low degree to the opponent’s retail services connected with the sale of hand tools in Class 35, as all the contested goods are different types of hand tools and therefore identical to the goods that are the subject of the opponent’s retail services.

Furthermore, the contested knives, forks, spoons are similar to a low degree to the opponent’s retail services connected with the sale of household or kitchen utensils in Class 35, as those utensils include the contested goods and are, therefore, identical.

These goods and services 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.

Contested goods in Class 11

According to the principles on similarity between retail services concerning the sale of particular goods and those particular goods, set out above, the contested devices for lighting, lights, lamps, lights especially garden, including lights for ponds, lamps, parts of the aforesaid goods are similar to a low degree to the opponent’s retail services connected with the sale of apparatus for lighting in Class 35. The contested devices for irrigation spray nozzles, irrigation equipment, equipment for water treatment, filters, parts of the aforesaid goods are similar to a low degree to the opponent’s retail services connected with the sale of water supply and sanitary purposes in Class 35. The contested ventilators are similar to a low degree to the opponent’s retail services connected with the sale of apparatus for ventilating in Class 35. These goods and services 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.

Contested goods in Class 12

According to the principles on similarity between retail services concerning the sale of particular goods and those particular goods, set out above, the contested trolleys are similar to a low degree to the opponent’s retail services connected with the sale of articles for cleaning purposes in Class 35, as those articles might include, for example, cleaning trolleys. These goods and services 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.

Contested goods in Class 20

The contested valves, the aforesaid goods mainly of metal are similar to a low degree to the opponent’s solenoid valves [electromagnetic switches] in Class 9. These goods have to some extent the same nature, as all of them are valves and might be produced by the same undertakings and distributed through the same distribution channels.

The contested handles made of wood and plastic are similar to a low degree to the opponent’s suitcase handles; umbrella handles; walking stick handles / walking cane handles in Class 18. These goods have to some extent the same nature, as all of them are handles, and might be produced by the same undertakings and distributed through the same distribution channels.

The contested furniture, garden furniture, mirrors, frames are similar to a low degree to the opponent’s retail services connected with the sale of furnishing, as furnishings include all types of furniture, fittings and other decorative accessories. These goods and services 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.

The contested hose reels, connecting pieces for pipes and hoses, the aforesaid goods mainly of metal, waste containers especially of metal, containers and vessels, their closures and handles and holders for these products, handles (metallic) for agricultural hand tools and garden equipment are dissimilar to all the opponent’s goods and services in Classes 9, 14, 18, 25, 26 and 35. Although the opponent’s goods and services in Classes 9, 18 and 35 also relate in various ways to containers and handles (e.g. containers for microscope slides; containers for contact lenses in Class 9, suitcase handles; umbrella handles; walking stick handles / walking cane handles in Class 18 and retail services connected with the sale of household or kitchen utensils and containers in Class 35), these contested goods are very specific goods of different kinds. Therefore, the abovementioned contested goods and all the opponent’s goods and services have different natures, purposes and methods of use. They are neither complementary nor in competition with each other. Furthermore, they are not produced by the same undertakings, are not distributed through the same distribution channels and target a different relevant public.

Contested goods in Class 21

Following the principles on similarity between retail services concerning the sale of particular goods and those particular goods set out above, the contested tools and containers for household and kitchen are similar to a low degree to the opponent’s retail services connected with the sale of household or kitchen utensils and containers in Class 35. These goods and services 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.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be similar to a low degree are directed partly at the public at large and partly at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods involved, the frequency of purchase and their price.

3. The signs

G21
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is the word mark ‘G21’, while the contested sign is a figurative mark composed of the stylised verbal element ‘G21’. The relevant public will dissect the letter ‘G’ and the number ‘21’ in both marks. As these elements are not descriptive, allusive or otherwise weak for the relevant goods and services, they are distinctive.

The marks have no elements that are considered more distinctive or more dominant (visually eye-catching) than others.

Although the contested sign is stylised, it is considered that the stylisation will not divert attention from the verbal element. The verbal element will be that by which the relevant public will refer to the mark.

Furthermore, both marks are short, as they are both composed of three characters (one letter and two numbers). The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in their verbal element, ‘G21’. However, they differ in the graphical depiction of the contested sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letter ‘G’ and the number ‘21’.

Therefore, the signs are aurally identical.

Conceptually, as both signs will be perceived as referring to the concept of the letter ‘G’ and the concept of the number ‘21’, the signs are conceptually identical.

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

4. Distinctiveness of the earlier mark

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

The opponent claimed that the earlier trade mark enjoys a reputation but did not file any evidence in order to prove such a claim.

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

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The contested goods are partly similar to a low degree and partly dissimilar to the opponent’s goods and services.

The earlier mark has a normal degree of distinctiveness. The relevant public is the public at large and business customers with specific professional knowledge or expertise, and the degree of attention will vary from average to high.

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

The marks are visually similar at least to an average degree, and aurally and conceptually identical because both are composed of the verbal element ‘G21’. The only difference between the signs is the stylisation of the contested sign.

It is true that some of the goods and services are only similar to a low degree. However, taking into account the interdependence principle mentioned above, it is considered that the striking similarities between the marks arising from the fact that they are composed of the identical verbal element ‘G21’ will offset the low similarity between the goods and services. Therefore, the relevant public might be led to believe that the goods and services found to be similar to a low degree come from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to a low degree to the goods and services of the earlier trade mark.

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.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

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 will be 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)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 04/12/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after an extension, on 09/06/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

Marta GARCÍA COLLADO

Saida CRABBE

Ric WASLEY

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.