OPPOSITION No B 2 322 447

Elgudza Sapiashvili, Sos. Colentina nr. 21, bl. R24, sc. A, et. 2, ap.11, sector 2, Bucharest, Romania (opponent), represented by Diligens Intellectual Property S.R.L., Cristian Nastase, Splaiul Independentei no. 3, Bl. 17, sc. 2, ap.27, sector 4, 040011, Bucharest, Romania (professional representative)

a g a i n s t

SC Dansk International Srl, Aleea Emanoil Buteica nr. 2, Bl. 68, Sc. 1, Et. 8, Ap. 49, Sector 3, 031822 Bucuresti, Romania (applicant), represented by Elena Oltean, Aleea Emanoil Buteica nr. 2, Bl. 68, Sc. 1, Et. 8, Ap. 49, Sector 3, 031822 Bucuresti, Romania (employee representative).

On 13/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 322 447 is upheld for all the contested goods and services.

2. European Union trade mark application No 12 253 019 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 253 019 (figurative mark). The opposition is based on Romanian trade mark registration No 154 747  (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

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

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

As a preliminary remark, the Opposition Division notes that the opponent argues that the applicant’s company was dissolved and ceased to exists on 03/04/2017 and that the contested EUTM application was not assigned or transferred to another holder. In this regard, it is noted that the applicant continues to be represented by a legal representative as outlined in its correspondence of 20/01/2019. Furthermore, in view of the lack of information to the contrary on behalf of the applicant and/or by its representative, as well as in view of the stage of the proceedings and the final outcome, the Office considers that it would be superfluous to further delay the proceedings in order to clarify this issue. In addition, this would have no effect or any bearing on the outcome of the proceedings. Therefore, in view of the circumstances, the Opposition Division will duly proceed with taking a decision on substance.

a) The goods and services

The goods and services on which the opposition is based are the following (as worded in the translation accompanying the registration certificate):

Class 8: Hand tools and hand tools; knives, forks and spoon; white guns; razor blades.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (excluding paintbrushes); brush material; cleaning; glassware, porcelain; metal sponges; raw or semi-worked glass (except for building glass).

Class 35: Advertising; business management; administration commercial; office work.

The contested goods and services are the following:

Class 21: Combs and sponges; Brushes (except paint brushes); Brush-making materials; Articles for cleaning purposes; Steelwool; Unworked or semi-worked glass (except glass used in building).

Class 35: Advertising; Business management; Business administration; Office functions.

Contested goods in Class 21

Combs and sponges; Brushes (except paint brushes); Brush-making materials; Articles for cleaning purposes; Unworked or semi-worked glass (except glass used in building) are identically contained in both lists of goods (including synonyms). The contested Steelwool also known as iron wool, wire wool, steel wire or wire sponge, is a bundle of very fine and flexible sharp-edged steel filaments. To the extent that steelwool is also used for household cleaning and/or hygienic purposes, it overlaps at least partially with the opponent’s metal sponges and they are therefore identical.

Contested services in Class 35

Advertising; Business management; Business administration; Office functions are identically contained in both lists of services (including synonyms).

b) Relevant public — degree of attention

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

In the present case, the goods and services found to be identical are directed both at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high depending on the specialised nature of the goods/services, their sophistication, frequency of purchase and/or terms and conditions of the goods and services purchased.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Romania.

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 a figurative mark and consists of a rectangular frame that incorporates the word ‘KAISERHOFF’, written in relatively standard uppercase letters, with the exception of the first and last letter which are slightly prolonged. The rectangular frame also has two small rectangles in its upper right-hand corner. Below ‘KAISERHOFF’ are the smaller verbal elements ‘KITCHENWARE & ACCESSORIES’, written in standard uppercase letters.

The contested sign is also figurative and consists of a stylised representation of a chef’s hat in red and white, the letters ‘KH’ and the word ‘KAISERHOFF’, written in relatively standard uppercase red letters.

The common element in the signs ‘KAISERHOFF’ has no meaning or semantic connotation(s) in the relevant territory. Therefore, its inherent distinctiveness is normal in relation to the goods and services. Likewise, the letters ‘KH’ in the contested sign, which may also be perceived as an abbreviation of the word that follows below them (as this unknown word starts with a ‘K’ and contains an ‘H’), have no specific descriptive or otherwise weak meaning in relation to the relevant goods and services and their inherent distinctive character is normal. However, the chef hat device in the contested sign will be associated with the concept of cooking/kitchen. Bearing in mind that part of the relevant goods may be used in household and kitchen, this element is weak for the relevant goods. However, as regards the remaining goods and services in relation to which such weak meaning does not exists, the inherent distinctiveness of this element is normal. Similar findings apply to the English terms ‘KITCHENWARE & ACCESSORIES’, which will be weak for those members of the public with some knowledge of English and for part of the goods, whereas for the remaining public and/or goods and services their inherent distinctiveness would be normal.

As regards the earlier sign, it is composed of at least one distinctive verbal element and less distinctive figurative elements (the frame, small rectangles and slight stylisation of the letters) of a purely decorative nature. Therefore, the verbal element(s) are more distinctive than the figurative elements. Similarly, as regards the figurative elements of the contested sign (such as the slight stylisation of the letters and colours), account must be taken that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The element ‘KAISERHOFF’ is the dominant element in the earlier mark, in view of its size and position. The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements. In spite of the smaller size of the word ‘KAISERHOFF’ in the contested sign, as compared to the other elements within the mark, it cannot be said that this element is overshadowed by the remaining elements, as it remains clearly visible and legible.

Visually, the signs coincide in the word ‘KAISERHOFF’, which represents a distinctive verbal element within both signs and is the dominant element of the earlier mark. As mentioned above, the graphical elements in the earlier mark are purely decorative and/or less important and the additional ‘KITCHENWARE & ACCESSORIES’ is weak in relation to part of the goods and public. As regards the contested sign, although the chef hat device is weak in relation to part of the goods and in spite of the fact that the letters ‘KH’ can be perceived as conceptually subordinate to the element ‘KAISERHOFF’, their visual role cannot be underestimated in view of their size and positioning. At the same time, in spite of its ‘last-line’ positioning, the verbal element ‘KAISERHOFF’ is also an important trade identifier within the contested sign and has an independent distinctive role therein. Consequently, in view of all these findings, taking into account the distinctive and figurative elements of the signs and their respective weight and positioning, it is concluded that the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive verbal element ‘KAISERHOFF’ and differs in the sound of ‘kitchen & accessories’ in the earlier mark and the letters ‘KH’ in the contested sign. Although the differing letters ‘KH’ appear in the beginning of the contested sign, bearing in mind that the coinciding word ‘Kaiserhoff’ in the contested sign is much longer and it is the first and dominant verbal element of the earlier mark, it is considered that the signs are aurally similar to at least an average degree.

The concepts of the signs have been defined above. As mentioned, the contested sign will be associated with the concept of a chef hat and the earlier mark may be associated with a meaning by a part of the relevant public with some knowledge of English. To that extent, the signs are not conceptually similar.

Nevertheless, it should be mentioned that for part of the relevant goods and/or public the hat device element and the words ‘kitchen & accessories’ are weak and not as important as the other verbal elements in the signs. As a result, these elements have a restricted conceptual impact for part of the goods and public and it is likely that the attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning.

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

d) Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak element(s) in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The contested goods and services are identical to the opponent’s goods and services. The relevant goods and services are directed at the public at large and at professional consumers and the level of attention varies from average to high.

The signs are visually similar to a low degree and aurally similar to at least an average degree. The signs are not conceptually similar but the conceptual differences are found in less important figurative elements or in elements that are less distinctive at least in relation to part of the public and goods. Also, in view of the structure, positioning and importance of the elements within marks, it is likely that the attention of the relevant public will be attracted by the fanciful verbal elements, which have no meaning.

The similarities between the signs are on account of the common and normally distinctive element ‘KAISERHOFF’, which constitutes a distinctive element within both signs and is the dominant element of the earlier mark. While it is indeed true that the signs differ in certain aspects, the differences are not of decisive importance. As follows from case law, two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30). The coincidence must be, therefore, ‘relevant’ from the perspective of the consumer who usually perceives a mark as a whole and does not proceed to analyse its various details (13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

In the present case, the coincidence between the signs is in the distinctive element ‘KAISERHOFF’, which is a ‘relevant’ coincidence from the perspective of the consumer.

Bearing in mind that the 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), it is considered that there is a risk of likelihood of confusion/association between the marks in relation to identical goods and services. This is because the coinciding element in the signs is the dominant element in the earlier mark and it has an independent distinctive role in the contested sign. It is conceivable that the relevant consumer will perceive the mark applied for as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers, including the professional public, could be led to believe that the owner of the earlier trade mark has launched a new line of goods and services designated by the trade mark applied for.

Considering all the above, including the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17), the Opposition Division finds that there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 154 747. It follows that the contested trade mark must be rejected for all the contested goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gueorgui IVANOV

Liliya YORDANOVA

Jakub MROZOWSKI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.