OPPOSITION No B 2 569 047

Benetton Holdings Ltd., 46 Micoud Street, Castries, St. Lucia, West Indies, Saint Lucia (opponent), represented by Swindell & Pearson Ltd., 48 Friar Gate, DE1 1GY Derby, United Kingdom (professional representative)

a g a i n s t

Gries Deco Company GmbH., Boschstr. 7a, 63843 Niedernberg, Germany (applicant), represented by Linklaters LLP., Taunusanlage 8, 60329 Frankfurt am Main, Germany (professional representative).

On 12/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 569 047 is partially upheld, namely for all the contested goods, except for the following:

Class 4: Candles, wicks and greases for lighting purposes.

Class 8: Hand tools and implements (hand-operated) for agricultural and horticultural purposes.

Class 14: Jewellery, precious stones, pearls and precious metals and imitations thereof, jewellery.

Class 16: Paper, cardboard, office requisites (except furniture), stationery goods, stationery, packaging material (cardboard, paper, starch), bags (envelopes, pouches) of paper and plastic for packaging.

Class 18: Hides, Imitation leather, leather cloth, worked or semi-worked hides and other leather, straps for soldiers' equipment, leather thread, straps (leather -), studs of leather, straps (leather -), leather thongs, laces (leather -), imitation leather, leather for furniture, leather for shoes, trimmings of leather for furniture, chin straps, of leather, furniture coverings of leather, sheets of leather for use in manufacture, straps made of imitation leather; leather, unworked or semi-worked; luggage, bags, pocket wallets, travelling sets (leatherware), trunks and travelling bags, umbrellas and parasols, walking sticks, briefcases, purses, valises, handbags, backpacks, bags for sports.

Class 21: Glue-pots; piggy banks; artificial nest eggs; polishing materials, except preparations, paper and stone.

Class 26: Buttons, haberdashery, ribbons, mica spangles, haberdashery other than yarns, spangles for clothing.

2. European Union trade mark application No 13 266 011 is rejected for part of the contested goods in Classes 8, 14, 16, 21, 24 and 26, namely those found to be identical or similar (to various degrees) below. It may proceed for the remaining goods (namely those listed above).

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 13 266 011 for the figurative mark , namely against all the goods in Classes 4, 8, 14, 16, 18, 21, 24 and 26. The opposition is based on:

1) European Union trade mark registration No 2 150 647 for the word mark ‘ROOM’,

2) United Kingdom trade mark registration No 3 006 870, for the series of word marks ‘ROOM/Room’,

3) United Kingdom trade mark registration No 2 255 616, for the word mark ‘ROOM’

for which Article 8(1)(a) and (b) and Article 8(5) EUTMR were invoked; and

4) United Kingdom non-registered trade mark ‘ROOM’ for which Article 8(4) EUTMR was invoked.

Although Article 8(5) EUTMR was not properly invoked in the opposition notice, the Opposition Division considers that the fact that the opponent claimed reputation and explicitly requested the refusal of the contested sign under Article 8(5) EUTMR in its writ submitted together with the opposition notice on 21/08/2015, is a clear indication that Article 8(5) EUTMR was also invoked as basis of the opposition in relation to earlier rights 1), 2) and 3). Therefore, the Opposition Division will examine it as such.

Moreover, the opponent, in its communication of 13/10/2017, expressly stated that it maintained the opposition based only on its earlier rights 1) to 3) and did not provide any evidence at all of use in the course of trade of more than mere local significance or proof of the applicable law required under Article 8(4) EUTMR for the earlier United Kingdom non-registered trade mark. Therefore, the Opposition Division will proceed accordingly and examine the opposition as based solely on earlier rights 1) to 3).

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 95(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 (in the version in force at the time of commencement of the adversarial part), 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 (in the version in force at the time of commencement of the adversarial part), 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 marks.

On 28/08/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit, which was originally due to expire on 02/01/2016, was extended at the opponent’s request until 02/03/2016.

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

Upon the applicant’s request for proof of use of the earlier rights dated 22/12/2017, the opponent submitted evidence of use on 13/03/2018, that is, after the expiry of the abovementioned time limit. Therefore, these submissions cannot be taken into account for the purposes of proving the reputation of the earlier rights in the United Kingdom. Nevertheless, the proof of use filed will be duly assessed for the purposes of the assessment of likelihood of confusion.

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.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based: 1) European Union trade mark registration No 2 150 647 for the word mark ‘ROOM’, 2) United Kingdom trade mark registration No 3 006 870, for the series of word marks ‘ROOM/Room’, 3) United Kingdom trade mark registration No 2 255 616, for the word mark ‘ROOM’.

The contested application was published on 22/05/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and the United Kingdom from 22/05/2010 to 21/05/2015 inclusive.

The request was submitted in due time. However, it is not admissible in respect of the earlier trade mark 2) United Kingdom trade mark registration No 3 006 870 for the series of word marks ‘ROOM/Room’, as it was registered on 14/03/2014; that is, less than five years prior to the relevant date mentioned above.

At this point, and for the sake of economy of proceedings, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier trade mark 2) for which there is no requirement of genuine use.

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.

a) The goods and services

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

Class 20: Garden furniture; garden furniture made of metal wood or plastics; handles made of plastics for garden implements; cat flaps not of metal or masonry; dog flaps not of metal or masonry; beds for domestic pets; beds for animals; carriers for animals; beds for household pets; beds for pets; dog mats; dog cushions; cat mats; cat cushions; materials for use as beds for domestic pets; radiator beds for pets; cat radiator beds; cat beds being hammocks; carriers for transporting domestic pets other than cages; scratching posts for animals; scratching posts for cats; dog houses; dog kennels; hutches for pets; Furniture; mirrors; bathroom furniture, bedroom furniture; kitchen furniture; living room furniture; dining room furniture; mirrored furniture; upholstered furniture; cushions, pillows; chairs, armchairs, seats, sofas, tables, beds; metal furniture; shelves, racks, benches, boxes magazine racks; trolleys; CD racks; DVD racks; utensil racks; recipe book stands; bottle racks; picture frames; chests, cabinets, desks, hat stands, mattresses, trolleys; curtain fittings; curtain rods, rails, poles, rings, hooks and tie- backs; wine racks; mobiles, wind chimes, wall plaques; 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; metal picture frames; non metal picture frames; seat pads; non metallic key rings; figurines being statuettes of wood, wax, plaster or plastic; ornamental figurines wood, wax, plaster or plastic; figurines made of gypsum cement or of gypsum derivatives, plaster, plastics, wax, wood or wood resin, miniature figurines; book rests being furniture; clothes racks being furniture; parts and fittings for the aforesaid goods.

Class 21: Cups; saucers; mugs; melon ballers; ice cream scoops; basting spoons; breakfast mugs; garlic presses; rolling pins; tableware, other than knives, forks and spoons; plates; dinner plates; side plates; kitchen utensils namely spatulas, serving or mixing spoons; wooden serving or mixing spoons; silicone kitchen utensils including spatulas, spoons, ladles tongs; knife blocks; storage jars; kitchen ladles; slotted serving spoons; slotted mixing spoons; bowls dishes; rice bowls; soup bowls; salad bowls; salad spinners; salad tongs; butter dish; oven gloves; baking trays made of aluminium; cake trays of precious metal; cloths for wiping tableware; trays for household utensils of china, ceramic, earthenware, glass, porcelain or plastic cutlery trays; decorative trays of china, ceramic, earthenware, glass, porcelain or plastic; draining trays; ice cube trays; metal trays for domestic purposes; vegetable mashers; frying pans; pancake frying pans; splatter guards for use whilst cooking; potato mashers; skimmers being non- electric kitchen implements; non-metallic trays for domestic purposes; serving trays; litter trays for pets; trays for domestic purposes; trays for domestic use; cruet sets; household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush- making materials; articles for cleaning purposes; steel-wool; un-worked or semi- worked glass (except glass used in building); giftware namely cooking utensils; glassware, porcelain and earthenware not included in other classes; baby baths being portable; basins bowls; decanters; glass stoppers; bottle openers; corkscrews; ceramics for household purposes; combs; cups of paper or plastic; cups, not of precious metal; drinking glasses; glasses; mugs, not of precious metal; paper plates; table plates, not of precious metal; tableware other than knives, forks and spoons not of precious metal; toilet cases; toothbrushes; toothbrushes, electric; vacuum bottles; domestic, household, bathroom or kitchen utensils and containers; wheeled containers of non-metallic materials for household or kitchen storage; containers for household storage purposes; kitchen use containers for kitchen storage purposes; containers of common metal with compartments for storage for kitchen use; containers of precious metal for storage purposes for household use; containers of precious metal for storage purposes for kitchen use; combs and sponges; brushes; lavatory brushes; soap and towel holders and dispensers; soap dishes; bath bridges; articles for cleaning purposes; crockery; egg holders, egg cups; toast racks; fitted picnic hampers; fitted picnic baskets; baskets; utensil containers, utensil pots; ice buckets, ice cube moulds; basins, bowls, receptacles, pitchers, bottles, plates, cups, mugs, saucers, jars, pots, pans, dishes; baskets, bins, boxes; ironing boards; bread bins; bread boards; cutting boards; beaters, blenders; bristles, brushes, buckets; candlesticks, candle rings, candle extinguishers; candle holders; coffee grinders, percolators, filters, pots; cooking utensils; whisks; cruets and cruet stands; dustbins and waste bins; flower pots; plant pots; planters; holders for flowers and plants; vases; jugs; graters; griddles and grills; sieves, shakers, sprinklers, strainers, colanders; napkin rings; napkin holders; kettles; lazy Susans; spice jars and containers; spice mills; salt and pepper grinders; spice sets; draining racks; table mats and coasters, not of paper and other than table linen; mug trees; cooking utensils; cooking tools namely cooking utensils; holders to contain wine bottles and dispense wine; toilet roll dispensers; towel rails; coasters in the form of a stand; coasters in the form of crockery; coasters made of china, earthenware, glass, porcelain; coasters and placemats not of paper and other than table linen; figures including model figures, doll figures and decorative action figures of earthenware, bone china, ceramic, decorative glass, lead crystal, porcelain, terra-cotta, glass, crystal, china; figurines including ornamental figurines, doll figurines and miniature figurines of earthenware, bone china, ceramic, decorative glass, lead crystal, porcelain, terra-cotta, glass, crystal, china; water bottles; containers for liquid being bottles; ricers; saucepan scourers of metal; earthenware saucepans; aluminium cookware; non-electric saucepans cooking pans; cooking pots; cooking pot sets; cooking skewers, cooking utensils for use with domestic barbecues; non-electric cooking utensils; cookware for use in microwave ovens; ferromagnetic cookware for use with induction cooking hobs; cookware, including, steamers, roasting pans, pots and pans; cast iron cookware; copper cookware; casseroles dishes; oven to table ware; silicone ovenware; metal bake-ware; silicone bake-ware; glass bake-ware; non-electric- stockpots; articles for use in cooking; cookware; autoclaves being non-electric pressure cookers; non-electric cleaning articles for cooking utensils; chopping boards; wooden chopping boards; plastic chopping boards; rubber chopping boards; glass chopping boards; cookery molds; cooking dishes; cookery moulds of ceramic, common metal, glass, earthenware; non-electric slow cookers; pastry cutters; pastry bags; cookie cutters; cookie jars; non-electric cookie crimpers; plastic cookware items; spice racks; parts and fittings for all the aforesaid goods.

Class 24: Loose covers for furniture, cushion covers; furniture, throws; blankets; bed linen; bedspreads; bath linen; table linen; bed and table covers; textile goods, not included in other classes; flags and banners; curtains; tea towels; household linen; kitchen linen; coasters of table linen; plastic table cloths; textile table cloths; table cloths not of paper; table cloths for hygienic purposes made of non-woven materials; drink coasters of table linen; covers for pillows; pillow shams; pillowcases; pillow covers; bed blankets; bed blankets made of cotton, man-made fibres or wool; cot blankets; quilted blankets being bedding; travel blankets; bath sheets being towels; bath towels; beach towels; hand towels of textile; kitchen towels of textile; towels of textile; bed sheets; cot sheets; dust sheets; mats being coasters of textile; textile coasters; fabric place mats; place mats not of paper; place mats made of textile, ceramic, plastics, cork, glass, metal wood or porcelain; table place setting mats of textile, ceramic, plastics, cork, glass, metal wood or porcelain; duvet covers; parts and fittings for all the aforesaid goods.

Class 35: The bringing together, for the benefit of others, of a variety of goods namely furniture, furnishings, lighting, object d'art, objects of vertu, paintings, clocks, printed posters, framed art and photographs, sculpture, soft furnishing, carpets, curtains wall and floor coverings, goods made from textiles namely domestic furnishings, blankets, sheets, household linens, kitchen and table linens, bed linen, table cloths, floor coverings, wall coverings of textile, floor coverings of textile, throws and antimacassars, printed goods namely books, brochures, catalogues, pamphlets, books of photographs, and magazines, enabling customers to conveniently view and purchase these goods in a retail store; the bringing together for the benefit of others, of a variety of goods namely furniture, furnishings, lighting, object d'art, objects of vertu, paintings, clocks, printed posters, framed art and photographs, sculpture, soft furnishing, carpets, curtains wall and floor coverings, goods made from textiles namely domestic furnishings, blankets, sheets, household linens, kitchen and table linens, bed linen, table cloths, floor coverings, wall coverings of textile, floor coverings of textile, throws and antimacassars, printed goods namely books, brochures, catalogues, pamphlets, books of photographs, and magazines, enabling customers to conveniently view and purchase those goods in a department store or show house; the bringing together for the benefit of others, of a variety of goods namely furniture, furnishings, lighting, object d'art, objects of vertu, paintings, clocks, printed posters, framed art and photographs, sculpture, soft furnishing, carpets, curtains, wall and floor coverings, goods made from textiles namely domestic furnishings, blankets, sheets, household linens, kitchen and table linens, bed linen, table cloths, floor coverings, wall coverings of textile, floor coverings of textile, throws and antimacassars, printed goods namely books, brochures, catalogues, pamphlets, books of photographs, and magazines, enabling customers to conveniently view and purchase those goods from a general merchandise Internet website; retail services, electronic shopping retail services, and mail order retail services connected with the sale of articles for decorating the home, articles of furniture, soft furnishings, works of art, paintings, photographs, works of sculpture, articles of interior design being objects d'art, mosaics, embroidery, wall hangings, wall coverings, floor coverings, electromechanical apparatus for use in the kitchen, electric carving knives, electric knives, electric kitchen knives, electric kitchen tools, electric meat slicers for kitchen use, electric domestic kitchen machines, electric kitchen machines, electrical kitchen machines for the preparation of food for cooking, electrically operated mixing appliances for kitchen use, hand-held electric kitchen utensils, kneaders being electric kitchen machines, liquidisers being electric kitchen machines, electric kitchen machines for sharpening, electric kitchen machines for mixing of materials, electric tin openers, electric kitchen machines for the preparation of carbonated beverages, electric kitchen machines for use in making ice cream, electric kitchen machines being salad drainers, cutlery, knives, cooks' knives, kitchen knives, hand-operated tin openers, scissors for kitchen use, lettuce knives, kitchen shears, poultry shears, hand-operated bread slicers, hand-operated cheese slicers, hand- operated egg slicers, slicers being hand-operated tools, hand-operated vegetable slicers, salad slicers, electronic weighing scales for kitchen use, kitchen scales, kitchen weighing scales, egg timers, kitchen timers, electronic weighing scales for kitchen use, kitchen scales, kitchen weighing scales, egg timers, kitchen timers, electronic thermometers other than for medical use, household thermometers, infrared thermometers, quartz glass thermometers, thermometers for testing the temperature of food lamps, domestic lamps, desk lamps, table lamps, lamp shades, lamp bases, electric lamps, chandeliers, chandelier pendants, apparatus for lighting, heating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, refrigerators, torches, electric kitchen machines for cooking, electric stockpots, electric kitchen stoves, pressure cooking saucepans, electric slow cookers, furniture, mirrors, silvered glass, jewellery cases not of precious metal, bathroom furniture, bedroom furniture, kitchen furniture, living room furniture, dining room furniture, mirrored furniture, upholstered furniture, cushions, pillows, chairs, armchairs, seats, sofas, tables, beds, metal furniture, shelves, racks, benches, boxes, magazine racks, trolleys, cd racks, dvd racks, utensil racks, recipe book stands, bottle racks, spice racks, picture frames, chests, cabinets, desks, hat stands, umbrella stands, mattresses, trolleys, curtain fittings, curtain rods, rails, poles, rings, hooks and tie-backs, wine racks, mobiles, wind chimes, wall plaques, articles of interior design being objects d'art and goods being furniture and furnishings and objects of vertu and objects d'art or sculpture made principally from or ornamented with wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials or of plastics, metal picture frames, non-metal picture frames, picture frame brackets, non metal bins, flower pot pedestals, flower stands, seat pads, non-metallic key rings, figurines being statuettes of wood, wax, plaster or plastic, ornamental figurines made of wood, wax, plaster or plastic, figurines made of gypsum cement or of gypsum derivatives or plaster, plastics, wax, wood or wood resin, miniature figurines, book rests being furniture, clothes racks being furniture, cups, saucers, mugs, breakfast mugs, plates, side plates, egg cups, storage jars', bowls dishes, rice bowls, soup bowls, butter dish, oven gloves, baking trays made of aluminium, cake trays of precious metal, cloths for wiping tableware, trays for household utensils of china, ceramic, earthenware, glass, porcelain or plastic, cutlery trays, decorative trays of china, ceramic, earthenware, glass, porcelain or plastic, draining trays, ice cube trays, metal trays for domestic purposes, non-metallic trays for domestic purposes, serving trays, litter trays for pets, trays for domestic purposes, trays for domestic use, cruet sets, household or kitchen utensils and containers (not of precious metal or coated therewith), 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), giftware namely articles of porcelain, bone china, earthenware, china or ceramic being tableware or decorative figurines, glassware, porcelain and earthenware, baby baths being portable, basins bowls, decanters, glass stoppers, bottle openers, corkscrews, ceramics for household purposes, combs, cups of paper or plastic, cups not of precious metal, drinking glasses, glasses, mugs not of precious metal, paper plates, table plates not of precious metal, tableware other than knives, forks and spoons not of precious metal, toilet cases, toothbrushes, electric toothbrushes, vacuum bottles, domestic or household or bathroom or kitchen utensils and containers, wheeled containers of non-metallic materials for household or kitchen storage, containers for household storage purposes, kitchen use containers for kitchen storage purposes, containers of common metal with compartments for storage for kitchen use, containers of precious metal for storage purposes for household use, containers of precious metal for storage purposes for kitchen use, combs and sponges, brushes, lavatory brushes, soap and towel holders and dispensers, soap dishes, bath bridges, articles for cleaning purposes, glassware, porcelain and earthenware, crockery, egg holders, egg timers and egg cups, toast racks, picnic hampers, picnic baskets, baskets, utensil containers, utensil pots, ice buckets, ice cube moulds, basins, bowls, receptacles, pitchers, bottles, plates, cups, mugs, saucers, jars, pots, pans, dishes, baskets, bins, boxes, ironing boards, bread bins, bread boards, cutting boards, beaters, blenders, bristles, brushes, buckets, candlesticks, candle rings, candle extinguishers, candle holders, coffee grinders, percolators, filters, pots, cooking utensils, whisks, cruets and cruet stands, dustbins and waste bins, flower pots, plant pots, planters, holders for flowers and plants, vases, jugs, graters, griddles and grills, sieves, shakers, sprinklers, strainers, napkin rings, napkin holders, kettles, lazy susans, spice jars and containers, spice mills, salt and pepper grinders, spice sets, draining racks, table mats and coasters, mug trees, cooking utensils and tools, holders to contain wine bottles and dispense wine, toilet roll dispensers, towel rails, coasters in the form of a stand, coasters in the form of crockery, coasters made of china, earthenware, glass or porcelain, coasters and placemats not of paper and other than table linen, figures including model figures, doll figures and decorative action figures of earthenware, bone china, ceramic, decorative glass, lead crystal, porcelain, terra- cotta, glass, crystal or china, figurines including ornamental figurines, doll figurines and miniature figurines of earthenware, bone china, ceramic, decorative glass, lead crystal, porcelain, terra-cotta, glass, crystal or china, water bottles, containers for liquid being bottles and parts and fittings for those goods, saucepan scourers of metal, earthenware saucepans, aluminium cookware, non-electric saucepans cooking pans, cooking pots, cooking pot sets, cooking skewers, cooking utensils for use with domestic barbecues, non-electric cooking utensils, frying pans, pancake frying pans, non-electric stockpots, articles for use in cooking, cookware, autoclaves being non-electric pressure cookers, non-electric cleaning articles for cooking utensils, cookery molds, cooking dishes, cookery moulds of ceramic, common metal, glass or earthenware, non-electric slow cookers, cookie cutters, cookie jars, non-electric cookie crimpers, plastic cookware items, cushion covers, furniture, throws, blankets, bed linen, bedspreads, bath linen, table linen, bed and table covers, textile goods namely domestic furnishings and blankets, sheets, household linens, kitchen and table linens, bed linen, table cloths, floor coverings, wall coverings of textile, floor coverings of textile and antimacassars, flags and banners, curtains, tea towels, coasters of table linen, plastic table cloths, textile table cloths, table cloths not of paper, table cloths for hygienic purposes made of non-woven materials, drink coasters of table linen, covers for pillows, pillow shams, pillowcases, pillow covers, bed blankets, bed blankets made of cotton, man-made fibres or wool, cot blankets, quilted blankets being bedding, travel blankets, bath sheets being towels, bath towels, beach towels, hand towels of textile, kitchen towels of textile, towels of textile, bed sheets, cot sheets, dust sheets, mats being coasters of textile, textile coasters, fabric place mats, place mats not of paper, place mats made of textile, ceramic, plastics, cork, glass, metal wood or porcelain, table place setting mats of textile, ceramic, plastics, cork, glass, metal wood or porcelain, duvet covers, aprons, clothing, headgear and footwear, artificial flowers, artificial garlands, wreaths of artificial flowers, bunches of artificial flowers, artificial flowers displayed in frames, games and playthings, gymnastic and sporting articles, cuddly toys, teddy bears, being toys, parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 4: Candles, wicks and greases for lighting purposes.

Class 8: Hand tools and implements (hand-operated) for agricultural and horticultural purposes, cutlery, scissors, cutting tools, table cutlery, in particular knives, forks and spoons, chopping knives, silver plate.

Class 14: Jewellery, clocks and watches, precious stones, pearls and precious metals and imitations thereof, jewellery, chronographic instruments, jewellery and watch boxes, chronometric instruments, chronometric equipment.

Class 16: Paper, cardboard, office requisites (except furniture), stationery goods, stationery, photographs, artists' materials; Paint brushes, packaging material (cardboard, paper, starch), bags (envelopes, pouches) of paper and plastic for packaging, printed matter, pictures, books.

Class 18: Hides, Imitation leather, Leather cloth, Worked or semi-worked hides and other leather, Straps for soldiers' equipment, Leather thread, Boxes made of leather, Straps (Leather -), Studs of leather, Straps (Leather -), Leather thongs, Laces (Leather -), Imitation leather, Cases, of leather or leatherboard, Leather for furniture, Leather for shoes, Trimmings of leather for furniture, Chin straps, of leather, Furniture coverings of leather, Cases, of leather or leatherboard, Sheets of leather for use in manufacture, Straps made of imitation leather; Leather, unworked or semi-worked; Luggage, bags, pocket wallets, travelling sets (leatherware), trunks and travelling bags, umbrellas and parasols, walking sticks, briefcases, purses, valises, handbags, backpacks, key cases, bags for sports.

Class 21: Mugs, household or kitchen containers, holders for flowers and plants (flower arranging), flower pots, candy boxes, nozzle heads for watering cans, bread boards, bread bins, bread baskets, cosmetic brushes, brushware, butter dishes, egg cups, buckets of all kinds, glass jars (carboys), disposable plates, ice buckets, enamelled glass, vinegar and oil cruets, vinegar and oil stands, chopsticks, figurines (statuettes) of porcelain, clay or glass, flasks, bottles, bottle openers, moulds (kitchen articles), moulds for ice cubes, non-electric fruit presses for household purposes, gardening gloves, household or kitchen receptacles, vegetable bowls, spice sets, watering cans, glasses (receptacles), glass flasks (containers), glass containers, glass bowls, glass mosaics (not for building), glass powder for decoration, glass caps, glassware, painted knobs of porcelain, grills (kitchen appliances), grill supports, napkin holders, towel rails and towel rings, household appliances, household gloves, abrasive sponges for scrubbing the skin, heat-insulated containers and receptacles, heat-insulated bottles, heat-insulated receptacles for beverages, heat-insulated receptacles for foodstuffs, cabarets (trays), combs, cheese-dish covers, non-electric equipment for filtering coffee, non-electric coffee pots, hand-operated coffee grinders, coffee services, pitchers and jugs, decanters, coasters for decanters (not of paper and excluding table linen), stew-pans, cookie jars, ceramics for household purposes, candle extinguishers, candlesticks, candle rings, garlic presses (kitchen utensils), cookery moulds, non-electric cooking utensils, cookware, mess-tins, kettles, cooking pots, baskets for household use, demijohns, corkscrews, cosmetic equipment, crystal (glassware), cake moulds, kitchen receptacles, kitchen utensils, kitchenware, refrigerating bottles, refrigerating bags, refrigerating boxes, portable, non-electric refrigerating bags, works of art of porcelain, clay or glass, glue-pots, candelabra (candlesticks), liqueur sets, flower-pot covers, not of paper, knife rests for the table, mixers (shakers), non-electric mixing utensils for household purposes, furniture dusters, hand-operated mills for household purposes, nail brushes, artificial nest eggs, hand-operated noodle machines, fruit cups, paper or plastic cups, paper towel dispensers of metal, paper plates, perfume sprayers, hand-operated pepper mills, fitted picnic baskets, biscuit cutters, cookie cutters, plates to prevent milk boiling over, polishing materials, except preparations, paper and stone, porcelain, lunch boxes, cosmetic powder compacts, powder puffs, hand-operated cleaning equipment, scouring pads, perfume burners, smoke absorbers for household purposes, graters (household articles), hand-operated cleaning equipment, cleaning cloths, non-electric stirring equipment, mixing spoons (kitchen utensils), cocktail stirrers, salad bowls, salt shakers, salt cellars, scrapers (kitchen utensils), scrapers for cleaning containers, bowls, scoops (tableware), signs of porcelain or glass, non-electric whisks for household purposes, chopping boards for kitchen purposes, basting spoons, covers for dishes, dishes, trivets (tableware), brushes for footwear, non-electric safety cleaning equipment, sponges for household purposes, earthenware saucepans, soap boxes, soap holders, soap dishes, soap dispensers, sieves (household utensils), lazy susans, napkin rings, strainers (household utensils), sifters, siphons for carbonated water, piggy banks, not of metal, statues of porcelain, clay or glass, crockery, buckets made of woven fabrics, soup bowls, trays of paper for household purposes, trays for household purposes, table centrepieces, tableware, services (dishes), cups, tea balls, tea caddies, tea pots, tea services, tea strainers, pastry cutters, rolling pins, table plates, animal bristles (brushware), crumb trays, pots, pottery, toilet utensils (body care), toilet cases, toilet paper holders, toilet paper dispensers, oven gloves, pot holders, tart scoops and slices, drinking vessels, drinking glasses, saucers, vases, non-electric kettles, disposable table plates, wine-tasters (siphons), toothbrushes, toothpicks, toothpick holders, non-electric crushers for household use, sugar bowls.

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

Class 26: Artificial flowers and fruit and wreaths thereof, buttons, haberdashery, embroidery, ribbons, mica spangles, haberdashery other than yarns, spangles for clothing.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘including’, used in the applicant’s and opponent’s 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, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 4

The contested candles, wicks and greases for lighting purposes are different to all the opponent’s goods and services in Classes 20, 21, 24 and 35. They differ in their nature and purpose. Their producers, relevant public and distribution channels are also different. They are not in competition with, or complementary to, each other. Moreover the opponent’s the bringing together, for the benefit of others, of a variety of goods namely […] lighting […] enabling customers to conveniently view and purchase these goods in a retail store; the bringing together for the benefit of others, of a variety of goods namely […] lighting […] enabling customers to conveniently view and purchase those goods in a department store or show house; the bringing together for the benefit of others, of a variety of goods namely […] lighting […] enabling customers to conveniently view and purchase those goods from a general merchandise Internet website in Class 35 and the contested good in Class 4 are not similar. In order to find similarity between goods and retail of goods they must either be exactly the same goods or fall under the natural and usual meaning of the category. In the present case, the contested goods do not fall under the natural and usual meaning of lighting since this category refers to lighting apparatus only.

Contested goods in Class 8

The contested cutlery, table cutlery, in particular knives, forks and spoons, chopping knives, silver plate are implements for eating, cutting and food preparation. They are similar to the opponent’s cooking pot sets in Class 21 as they have the same purpose and nature. They usually coincide in producer, relevant public and distribution channels.

The contested scissors, cutting tools are either specific cutting tools with multiple uses (scissors) or a broad category of cutting instruments not only for kitchen or table purposes. Therefore, these goods are similar to a low degree with the opponent’s cooking pot sets in Class 21 as far as they can have the same purpose and nature and can coincide in producer, relevant public and distribution channels.

The contested hand tools and implements (hand-operated) for agricultural and horticultural purposes are different to all the opponent’s goods and services in Classes 20, 21, 24 and 35. They differ in their nature and purpose. Their producers, relevant public and distribution channels are also different. They are not in competition with, or complementary to, each other. Moreover, they do not fall under the natural and usual meaning of any of the categories of goods covered by the opponent’s services in Class 35.

Contested goods in Class 14

The contested clocks and watches, chronographic instruments, chronometric instruments and chronometric equipment are similar to a low degree to the opponent’s the bringing together, for the benefit of others, of a variety of goods namely […] clocks […] enabling customers to conveniently view and purchase these goods in a retail store. 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.

The contested jewellery [boxes] and watch boxes are similar to a low degree to the opponent’s retail services, electronic shopping retail services, and mail order retail services connected with the sale of […] jewellery cases not of precious metal […]. 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.

The contested jewellery, precious stones, pearls and precious metals and imitations thereof, jewellery are different to all the opponent’s goods and services in Classes 20, 21, 24 and 35. They differ in their nature and purpose. Their producers, relevant public and distribution channels are also different. They are not in competition with, or complementary to, each other. Moreover, they do not fall under the natural and usual meaning of any of the categories of goods covered by the opponent’s services in Class 35.

Contested goods in Class 16

The contested artists’ materials; paint brushes are similar to the opponent’s brushes (except paint brushes) in Class 21. Although explicitly excluded from Class 21, the contested paint brushes can have the same producers and distribution channels. They can also coincide in public, purposes and methods of use. Moreover, the contested artist’s materials include paint brushes; therefore they are equally similar to the opponent’s goods.

The contested photographs, pictures are similar to a low degree to the opponent’s retail services, electronic shopping retail services, and mail order retail services connected with the sale of […] photographs […]. 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.

The contested printed matter, books are similar to a low degree to the opponent’s the bringing together, for the benefit of others, of a variety of goods namely […]printed goods namely books […] enabling customers to conveniently view and purchase these goods in a retail store. 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.

The contested paper, cardboard, office requisites (except furniture), stationery goods, stationery, packaging material (cardboard, paper, starch), bags (envelopes, pouches) of paper and plastic for packaging are different to all the opponent’s goods and services in Classes 20, 21, 24 and 35. They differ in their nature and purpose. Their producers, relevant public and distribution channels are also different. They are not in competition with, or complementary to, each other. Moreover, they do not fall under the natural and usual meaning of any of the categories of goods covered by the opponent’s services in Class 35.

Contested goods in Class 18

The contested boxes made of leather; cases, of leather or leatherboard; cases, of leather or leatherboard are similar to the opponent’s boxes in Class 21. They have the same purposes and can come from the same producers. They also coincide in public and distribution channels.

The contested key cases are similar to the opponent’s non metallic key rings in Class 20. They serve to the same purposes and can have the same producers. They also coincide in public and distribution channels. Furthermore, they can be in competition.

The contested hides, imitation leather, leather cloth, worked or semi-worked hides and other leather, straps for soldiers' equipment, leather thread, straps (leather -), studs of leather, straps (leather -), leather thongs, laces (leather -), imitation leather, leather for furniture, leather for shoes, trimmings of leather for furniture, chin straps, of leather, furniture coverings of leather, sheets of leather for use in manufacture, straps made of imitation leather; leather, unworked or semi-worked; luggage, bags, pocket wallets, travelling sets (leatherware), trunks and travelling bags, umbrellas and parasols, walking sticks, briefcases, purses, valises, handbags, backpacks, bags for sports are different to all the opponent’s goods and services in Classes 20, 21, 24 and 35. They differ in their nature and purpose. Their producers, relevant public and distribution channels are also different. They are not in competition with, or complementary to, each other. Moreover, they do not fall under the natural and usual meaning of any of the categories of goods covered by the opponent’s services in Class 35.

Contested goods in Class 21

Basting spoons; biscuit cutters; bottle openers; bottles; bowls; bread bins; bread boards; buckets of all kinds; butter dishes; candle extinguishers; candlesticks; candle rings; candelabra (candlesticks); ceramics for household purposes; combs; cookery moulds; cookie cutters; cookie jars; cooking pots; cookware; corkscrews; crockery; cups; decanters; dishes; drinking glasses; earthenware saucepans; egg cups; fitted picnic baskets; flower pots; garlic presses (kitchen utensils); glass caps; glasses (receptacles); glassware; grills (kitchen appliances); ice buckets; kettles; lazy susans; mixers (shakers); mixing spoons (kitchen utensils); moulds for ice cubes; mugs; napkin holders; napkin rings; non-electric cooking utensils; oven gloves; paper or plastic cups; paper plates; pastry cutters; pitchers and jugs; rolling pins; salad bowls; saucers; sieves (household utensils); soap dishes; soap dispensers; soup bowls; spice sets; strainers (household utensils); sifters, not of metal, clay or glass; tableware; toilet cases; toilet paper dispensers; toothbrushes; towel rails and towel rings; trays for household purposes and Vases are identically contained in both lists of goods (including synonyms).

The contested disposable table plates; disposable plates overlap with the opponent’s paper plates. Therefore, they are identical.

The contested abrasive sponges for scrubbing the skin overlap with the opponent’s combs and sponges. Therefore, they are identical.

The contested wine-tasters (siphons) overlap with the opponent’s decanters. Therefore, they are identical.

The contested crumb trays overlap with the opponent’s trays for domestic purposes. Therefore, they are identical.

The contested statues of porcelain overlap with the opponent’s figures including model figures, doll figures and decorative action figures of earthenware, bone china, ceramic, decorative glass, lead crystal, porcelain, terra-cotta, glass, crystal, china. Therefore, they are identical.

The contested drinking vessels are containers in which liquid is kept for drinking purposes. They overlap with the opponent’s drinking glasses. Therefore, they are identical.

The contested soap holders overlap with the opponent’s soap dishes. Therefore, they are identical.

The contested heat-insulated containers and receptacles; heat-insulated receptacles for beverages; heat-insulated receptacles for foodstuffs overlap with the opponent’s basins, bowls, receptacles, pitchers, bottles, plates, cups, mugs, saucers, jars, pots, pans, dishes. Therefore, they are identical.

The contested toilet paper holders overlap with the opponent’s toilet roll dispensers. Therefore, they are identical.

The contested non-electric mixing utensils for household purposes overlap with the opponent’s wooden serving or mixing spoons. Therefore, they are identical.

The contested flasks; glass flasks (containers); refrigerating bottles; siphons for carbonated water overlap with the opponent’s containers for liquid being bottles. Therefore, they are identical.

The contested moulds (kitchen articles) overlap with the opponent’s cookery molds. Therefore, they are identical.

The contested glass mosaics (not for building) overlap with the opponent’s un-worked or semi- worked glass (except glass used in building). Therefore, they are identical.

The contested candy boxes; glass containers; lunch boxes; tea caddies; soap boxes overlap with the opponent’s household or kitchen utensils and containers (not of precious metal or coated therewith). Therefore, they are identical.

The contested porcelain, hand-operated cleaning equipment; hand-operated cleaning equipment; scrapers for cleaning containers; non-electric safety cleaning equipment overlap with the opponent’s articles for cleaning purposes. Therefore, they are identical.

The contested hand-operated mills for household purposes include, as a broader category the opponent’s spice mills. Since the office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested household appliances include as a broader category the opponent’s coffee grinders, percolators, filters, pots. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested scoops (tableware) includes, as a broader category the opponent’s ice cream scoops. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested toilet utensils (body care) includes, as a broader category the opponent’s combs and sponges. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested holders for flowers and plants (flower arranging) includes, as a broader category the opponent’s flower pots. Since the office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested brushware includes, as a broader category the opponent’s brushes. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested kitchenware includes, as a broader category the opponent’s kitchen utensils namely spatulas, serving or mixing spoons. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested cosmetic equipment includes, as a broader category the opponent’s combs. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested liqueur sets are included in the broad category of the opponent’s glassware, porcelain and earthenware not included in other classes. Therefore, they are identical.

The contested toothpick holders are included in the broad category of the opponent’s utensil containers, utensil pots. Therefore, they are identical.

The contested non-electric whisks for household purposes are included in the broad category of the opponent’s whisks. Therefore, they are identical.

The contested crystal (glassware); works of art of porcelain, clay or glass are included in the broad category of the opponent’s glassware, porcelain and earthenware not included in other classes. Therefore, they are identical.

The contested fruit cups are included in the broad category of the opponent’s cups. Therefore, they are identical.

The contested cake moulds are included in the broad category of the opponent’s cookery molds. Therefore, they are identical.

The contested hand-operated pepper mills are included in the broad category of the opponent’s salt and pepper grinders. Therefore, they are identical.

The contested non-electric coffee pots; hand-operated coffee grinders; non-electric equipment for filtering coffee are included in the broad category of the opponent’s coffee grinders, percolators, filters, pots. Therefore, they are identical.

The contested stew-pans are included in the broad category of the opponent’s cookware, including, steamers, roasting pans, pots and pans. Therefore, they are identical.

The contested vinegar and oil cruets; vinegar and oil stands are included in the broad category of the opponent’s cruets and cruet stands. Therefore, they are identical.

The contested coasters for decanters (not of paper and excluding table linen) are included in the broad category of the opponent’s coasters and placemats not of paper and other than table linen. Therefore, they are identical.

The contested furniture dusters; scouring pads; cleaning cloths; sponges for household purposes are included in the broad category of the opponent’s articles for cleaning purposes. Therefore, they are identical.

The contested chopsticks; cocktail stirrers; knife rests for the table; trivets (tableware); table centrepieces; tart scoops and slices are included in the broad category of the opponent’s tableware, other than knives, forks and spoons. Therefore, they are identical.

The contested enamelled glass are included in the broad category of the opponent’s un-worked or semi- worked glass (except glass used in building). Therefore, they are identical.

The contested painted knobs of porcelain; signs of porcelain or glass are objects made of glass or porcelain; therefore, they are included in the opponent’s broader category of glassware, porcelain and earthenware not included in other classes. They are identical.

The contested household or kitchen containers; kitchen utensils; salt cellars; household or kitchen receptacles; cheese-dish covers; mess-tins; hand-operated noodle machines; plates to prevent milk boiling over; covers for dishes; non-electric fruit presses for household purposes; non-electric stirring equipment; scrapers (kitchen utensils) are kitchen utensils and containers included in the broad category of the opponent’s household or kitchen utensils and containers (not of precious metal or coated therewith). Therefore, they are identical.

The contested refrigerating bags; refrigerating boxes; portable, non-electric refrigerating bags are containers for keeping things cool, especially food and drinks. Therefore, they fall under the opponent’s broader category of household or kitchen utensils and containers (not of precious metal or coated therewith). Therefore, they are identical.

The contested chopping boards for kitchen purposes are included in the broad category of the opponent’s chopping boards. Therefore, they are identical.

The contested buckets made of woven fabrics; animal bristles (brushware) are included in the broad category of the opponent’s bristles, brushes, buckets. Therefore, they are identical.

The contested salt shakers are included in the broad category of the opponent’s spice sets. Therefore, they are identical.

The contested paper towel dispensers of metal are included in the broad category of the opponent’s soap and towel holders and dispensers. Therefore, they are identical.

The contested non-electric kettles are included in the broad category of the opponent’s kettles. Therefore, they are identical.

The contested cosmetic brushes; nail brushes; brushes for footwear are included in the broad category of the opponent’s brushes. Therefore, they are identical.

The contested glass jars (carboys); demijohns are included in the broad category of the opponent’s storage jars. Therefore, they are identical.

The contested figurines (statuettes) of porcelain, clay or glass are included in, or overlap with, the broad category of the opponent’s figures including model figures, doll figures and decorative action figures of earthenware, bone china, ceramic, decorative glass, lead crystal, porcelain, terra-cotta, glass, crystal, china. Therefore, they are identical.

The contested cabarets (trays); trays of paper for household purposes are included in the broad category of the opponent’s trays for domestic purposes. Therefore, they are identical.

The contested bread baskets; baskets for household use are included in the broad category of the opponent’s baskets. Therefore, they are identical.

The contested glass bowls; services (dishes); tea pots; table plates; pots; pottery; sugar bowls; vegetable bowls; heat-insulated bottles; coffee services; kitchen receptacles; tea services are included in the broad category of the opponent’s basins, bowls, receptacles, pitchers, bottles, plates, cups, mugs, saucers, jars, pots, pans, dishes. Therefore, they are identical.

The contested tea strainers; tea balls are included in the broad category of the opponent’s strainers, colanders. Therefore, they are identical.

The contested pot holders are similar to a high degree to the opponent’s oven gloves because they coincide in the following criteria: They have the same nature. They have the same purpose. They coincide in method of use. They are in competition. They coincide in distribution channels. They coincide in end user. They coincide in producer.

The contested grill supports are similar to a high degree to the opponent’s griddles and grills because they coincide in the following criteria: They are complementary. They coincide in distribution channels. They coincide in end user. They coincide in producer.

The contested graters (household articles); non-electric crushers for household use are similar to a high degree to the opponent’s salt and pepper grinders because they coincide in the following criteria: They have the same nature. They have the same purpose. They coincide in method of use. They coincide in end user. They coincide in producer.

The contested toothpicks are similar to the opponent’s toothbrushes. This is because they share the same purpose (mouth/teeth care), end users and distribution channels. Moreover, they might be in competition and/or be complementary to each other.

The contested household gloves are similar to the opponent’s oven gloves because they coincide in the following criteria: They have the same nature. They coincide in method of use. They coincide in distribution channels. They coincide in end user. They coincide in producer.

The contested watering cans; nozzle heads for watering cans are similar to the opponent’s sprinklers. They have the same purpose. They coincide in end users and producers. They are in competition.

The contested flower-pot covers not of paper are similar to the opponent’s flower pots. They are complementary and coincide in end users, producers and distribution channels.

The contested perfume sprayers; cosmetic powder compacts; powder puffs are cosmetic and toilet utensils. They are similar to the opponent’s combs and sponges. They can have the same purpose and coincide in end users, producers and distribution channels.

The contested smoke absorbers for household purposes; perfume burners are household utensils for refreshing the air. They are similar to a low degree to the opponent’s articles for cleaning purposes because they coincide in the following criteria: They can have the same purpose. They can coincide in end users and producers.

The contested gardening gloves are similar to a low degree to the opponent’s oven gloves because they coincide in the following criteria: They have the same nature. They coincide in method of use. They coincide in producer.

The contested glass powder for decoration is similar to a low degree to the opponent’s retail services, electronic shopping retail services, and mail order retail services connected with the sale of articles for decorating the home […]. 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.

The contested glue-pots; piggy banks; artificial nest eggs; polishing materials, except preparations, paper and stone are different to all the opponent’s goods and services in Classes 20, 21, 24 and 35. They differ in their nature and purpose. Their producers, relevant public and distribution channels are also different. They are not in competition with, or complementary to, each other. Moreover, they do not fall under the natural and usual meaning of any of the categories of goods covered by the opponent’s services in Class 35.

Contested goods in Class 24

Bed and table covers and textile goods, not included in other classes are identically contained in both lists of goods (including synonyms).

The contested textiles (not included in other classes) are similar to a low degree with the opponent’s towels of textile. They have the same nature and they usually coincide in relevant public and distribution channels.

Contested goods in Class 26

The contested artificial flowers and fruit and wreaths thereof, are similar to a low degree to the opponent’s ornamental figurines [of] wood, wax, plaster or plastic in Class 20. Being decorative accessories all goods serve to decorate the house. They are directed to the same public over the same distribution channels. Therefore, they can as well coincide in the producers.

The contested embroidery is similar to a low degree to the opponent’s retail services, electronic shopping retail services, and mail order retail services connected with the sale of […] embroidery […]. 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.

The contested buttons, haberdashery, ribbons, mica spangles, haberdashery other than yarns, spangles for clothing are different to all the opponent’s goods and services in Classes 20, 21, 24 and 35. They differ in their nature and purpose. Their producers, relevant public and distribution channels are also different. They are not in competition with, or complementary to, each other. Moreover, they do not fall under the natural and usual meaning of any of the categories of goods covered by the opponent’s services in Class 35.

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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

ROOM/Room*
Earlier trade mark	Contested sign

*Marks in a series

The relevant territory is the United Kingdom.

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 common element ‘ROOM’ of the signs will be associated with its meaning in English (separate section or part of the inside of a building). In the contested sign this word is in plural and will be perceived as such. Bearing in mind that the relevant goods and services are, inter alia, household utensils or objects for the house, this element may allude to the purposes or subject matter of part of the goods and services, therefore its distinctive character is limited for certain goods and services.

The figurative element in the shape of a house of the contested sign also has a limited distinctive character for the same reasons stated above.

The figurative element in the shape of a cross and a heart and smaller crosses between the letters of the contested sign, albeit distinctive, will be perceived as merely decorative elements. Account must be taken of the fact 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). Therefore, none of the signs has a dominant element which can be considered the most eye-catching.

The applicant argues that the device of a house will be interpreted as a popular children’s game in Germany known as ‘House of Santa Claus’ (Haus vom Nikolaus) that consists in drawing a house in a single go, without lifting the pencil from the paper nor writing over the same line twice. The Opposition Division considers this argument flawed since it is clear that the device, whose lines do not touch each other, is not drawn in the way described by the applicant. In any event, the relevant territory is the UK and the applicant did not show that the public of this territory would perceive the device in such way. The only submission in this regard comes from a German website as can be seen from the top level domain ‘.de’ (http://www.mathematische-basteleien.de).

Visually, the contested sign includes the earlier sign in its entirety. However, they differ in the additional letter ‘S’ and in the figurative elements of the contested sign which have no counterparts in the earlier sign. Despite the limited distinctive character of the common elements, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛R-O-O-M’, present identically in both signs. The pronunciation differs in the sound of the letter ‛S’ of the contested sign, which has no counterpart in the earlier mark. Despite the limited distinctive character of the common elements, the signs are aurally almost identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Moreover, the contested sign will be also associated with the concepts of a house and a heart. Despite the limited distinctive character of the similar meaning, the signs are at least similar to an average degree.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim (see section Reputation‑Article 8(5) EUTMR of this decision).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as limited for some of the goods and services in question, in particular most of the goods and services in Classes 20, 21, 24 and 35. The mark has a normal degree of distinctiveness for goods such as garden furniture in Class 20 in relation to which the meaning of ‘room’ is not relevant.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods and services found to be identical or similar (to various degrees) target the public at large and a professional public whose level of attention may 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 similarity of the signs results from the identical reproduction of the earlier mark’s verbal element in the contested sign. The remaining letter ‘S’ of the applicant’s sign cannot outweigh the high aural similarities between the marks. The figurative elements of the contested sign play a secondary role since the public tends to refer to the signs by their verbal elements instead of describing their components. Therefore, the common verbal element ‘ROOM’, albeit of limited distinctive character, plays a greater role in the comparison, making the signs visually and conceptually also similar.

The applicant argued that the cross device between the letters ‘O’ in the sign applied for would make the public interpret it as a letter ‘X’ and, therefore, pronounce the verbal element as ‘ROXOMS’. This argument seems farfetched to the Opposition Division since it is clear that the cross device is not comparable to the rest of the letters due to its size, position and stylisation.

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

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

The opposition is also successful for the goods and services that are similar to a low degree. In this particular case, albeit the limited distinctive character of the common element, the lower degree of similarity of the goods and services cannot outweigh the visual, conceptual and mainly aural similarities of the signs.

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.

The opponent has also based its opposition on the following earlier trade marks:

1) European Union trade mark registration No 2 150 647 for the word mark ‘ROOM’; and

3) United Kingdom trade mark registration No 2 255 616, for the word mark ‘ROOM’

Since these marks are identical to the one which has been compared and cover the same or a narrower scope of services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. For example, UK trade mark registration No 2 255 616 covers, inter alia, the bringing together for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a department store or show house in Class 35. Retail services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary. Therefore, the contested goods found dissimilar above are also dissimilar to the opponent’s services. Therefore, no likelihood of confusion exists with respect to those goods and services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and/or the goods and services are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some 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

Claudia MARTINI

Octavio MONGE GONZALVO

Helen Louise MOSBACK

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.