OPPOSITION No B 2 606 005

OPPOSITION DIVISION

OPPOSITION No B 2 606 005

Optimum Mark Sp. z o.o., ul. Dolna 3, 00-773 Warsaw, Poland (opponent), represented by Kancelaria Prawno-Patentowa Ryszard Skubisz, ul. Piastowska 31, 20-610 Lublin, Poland (professional representative)

a g a i n s t

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (applicant), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative).

On 15/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 606 005 is partially upheld, namely for the following contested goods:

Class 1: Seaweed (fertilizers); horticulture chemicals, except fungicides, herbicides, insecticides and parasiticides; manures; earth for growing; flower preservatives; humus and fertilisers; compost; seed preserving substances; peat (fertiliser); peat pots for horticulture; manures for gardening, being mouldings for use in sprinklers; loam; compost, manures, nutrient salts.

Class 4: Candles with insect repellents; citronella candle assortments; patio torches.

Class 5: Fungicides, herbicides, insecticides; herbicides for weeds and grass.

Class 6: Swimming pools, structures of metal; transportable gazebos, summer houses and greenhouses of metal; compost bins of metal; garden fences of metal; trellises and posts for supporting plants and branches, lawn and flower bed borders of metal; containers of metal for gardens; assortment boxes of metal for selling goods; handles of metal for gardening and household apparatus, nozzles of metal; mounting clips of metal for tools and other objects, in particular for hose, gardening and DIY apparatus; posts of metal for holding beverages; hooks of metal; plant hangers of metal; basket hangers; basket posts; tomato cages; pavilions consisting predominantly of metal; bird baths of metal; garden arches of metal; general storage containers for gardening and household apparatus; garden tiles, plant rings, flower bed borders; figures of metal for gardens.

Class 7: Tools (not hand operated); parts of machines, namely tubes and pipes for liquids and gases, fittings therefor, in particular taps, valves, gaskets, connection pieces and connectors, the aforesaid goods of metal and plastic; large and small horticultural and agricultural apparatus (other than hand-operated), in particular lawnmowers, gardening machines, scarifying apparatus for lawns, lawn treatment apparatus, choppers, care and cleaning apparatus, spreaders, manure spreading and snow clearing apparatus; power operated saws; motorised shears for gardening and household purposes; pumps, included in class 7; mechanical dosing apparatus for manure and plant protection preparations; mechanical cutting apparatus; vacuum cleaners; garden motors and engines; electric weed and grass cutters.

Class 8: Hand tools, hand-operated; large and small hand-operated horticultural and agricultural implements, in particular axes, tree pruners, pruners for trees, pruning knives, secateurs, pruning shears, pruning saws, lawn aerators, garden tools, lawnmowers, hand-operated scarifying apparatus for lawns, ditchers, rakes, border shears, hoes, Hainault scythes, trowels (gardening), lawn treatment apparatus, rakes, care and cleaning apparatus; spreaders, manure spreading and snow clearing apparatus, all of the aforesaid being hand-operated; hand-operated garden sprays; whetstones; hand-operated fruit pickers; hand-operated implements for destroying plant parasites; lawn clippers (hand-operated); hand-operated shears for gardening and household purposes; handheld sweeping tools; sprayers for devices for mixing manure and plant protection preparations, sprayers for spraying insecticides, insecticide atomisers, all the aforesaid goods being hand-operated; shovels [hand tools]; hoes, spades, rakes, rakes, plant wedges, shovels for children; spades, hoes, rakes, rakes, scoops, digging forks [spading forks], garden cultivators, edging knives; hand-operated tiller; folding saw and hacksaw assortments; handsaws; thistle extirpators [hand tools]; scissors; hand held tools, namely secateurs.

Class 9: Gloves for protection.

Class 11: Luminaires, electric garden lights, lightbulbs; parts for the aforesaid goods; including the aforesaid goods in the form of parts for lighting systems, in particular for the garden; showers; fountains; fairy lights; water filtering installations; automatic watering apparatus; solar-powered headlights; headlights; screen lights; light chain assortments; electric Chinese lanterns; flameless candle lanterns; coal lighters for fireplaces and grills; electromechanical and/or time-controlled water valves; drip irrigation apparatus (other than hand-operated); motorised soil irrigation apparatus; taps [faucets].

Class 12: Hand carts, wheelbarrows and hose carts; hose carts of plastic and/or metal.

Class 16: Grass and leaf disposal pouches; plastic bags.

Class 17: Hoses, not of metal, in particular garden hoses, hose couplings of plastic, hose straps of plastic and/or metal; garden hose sets, tap connectors, connectors for tubes, hose assemblies; hosepipes for watering, irrigation spray hoses.

Class 19: Fences, not of metal, transportable gazebos, summer houses and greenhouses of plastic, compost silos of plastic and/or wood; garden fences of plastic and/or wood; trellises and posts for supporting plants and branches, lawn and flower bed borders of plastic and/or wood; garden ponds of plastic; pavilions predominantly not of metal; geotextiles, namely fabrics and foils for horticulture; bird baths, not of metal; non-metal greenhouses; miniature greenhouses; birdboxes; lawn and flower bed borders of plastic or wood.

Class 20: Holders and brackets for lighting fixtures, not of metal; racks; mounting clips of plastic for tools and other objects, in particular for hose, household, gardening and DIY apparatus and objects; sales display stands; assortment boxes of plastic for selling goods, brooms and containers of plastic for garden and household purposes, and industrial and storage purposes; handles of plastic and/or wood for gardening and household apparatus; lawn furniture; posts for supporting plants, not of metal; garden figurines of plastic or wood; garden obelisks; cushions; umbrella stands; garden kneelers/seats; knee pads for household and gardening purposes; pinwheels; boards for hanging tools and other objects, in particular for hoses, household, gardening and DIY apparatus and objects; composters.

Class 21: Sprinklers; sprinklers; watering cans; watering can sprinklers; flower pots and plant boxes, and sprinklers therefor; brooms and brush goods, jointing brushes; hand-operated syringes, hand-operated sprayers and spraying apparatus for garden and household purposes; sponges; soap dispensers; brooms and containers of metal for garden and household purposes; holders for flowers and plants [flower arranging]; bird feed stations; bird feed dispensers; electric apparatus for attracting and destroying insects; compost containers for household use; spray lances; garden work shoes; brooms for children; brooms; sprinklers; crystal glasses.

Class 22: Canvas canopies; nets; awnings; tarpaulins; woven tarpaulins.

Class 25: Garden clothing, garden overalls, caps and hats.

Class 28: Swimming pools (toys).

Class 31: Agricultural, horticultural, forestry products; grains (seeds), plant seeds; flowers, flower bulbs; natural plants, seed germ for botanical purposes, seedlings; straw mulch.

2. European Union trade mark application No 14 297 006 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 297 006, namely against all the goods in Classes 1, 4, 5, 6, 7, 8, 9, 11, 12, 16, 17, 19, 20, 21, 22, 25, 28 and 31. The opposition is based on, inter alia, Polish trade mark registration No 271 939. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In its submissions of 18/05/2016, the applicant argued that some of the earlier Polish trade marks on which the opposition is based, namely Polish trade marks No 272 976, No 271 939, No 271 938, No 252 329, No 252 331, No 252 332, No 252 330 and No 275 231, are registered in colour. However, the opponent attached only black-and-white copies of those marks to its notice of opposition of 06/11/2015. Therefore, in the applicant’s opinion, the opposition should be rejected as unfounded in accordance with Rule 15(2)(e) EUTMIR.

With regard to this argument, the Opposition Division notes that the notice of opposition submitted by the opponent within the opposition period clearly contains colour representations of all the earlier Polish trade marks referred to by the applicant. In addition, within the time limit to substantiate the earlier rights invoked, the opponent submitted registration certificates for all its Polish trade marks, including depictions thereof in colour and colour descriptions for each mark (with translations thereof). Consequently, there is no room for doubts that the abovementioned earlier rights have been correctly substantiated. The fact that some of the depictions of the earlier rights appearing in the copies of the registration certificates are somewhat pale should be considered nothing more than a mere reprographic discrepancy.

In the light of the foregoing, the applicant’s argument is dismissed.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Polish trade mark registration No 271 939.

The goods

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

Class 1: Manures, earth for growing, potting soil, horticultural substrates, bark chips, loam, fertilisers, humus, compost, chemical products used in horticulture, except fungicides, herbicides, insecticides and anti-parasite, guano.

Class 4: Fuel for use in barbecues, barbecue briquettes, charcoal, tapers, firelighters, methylated spirit, briquettes of wood, charcoal, petroleum, raw or refined, peat [blocks of peat (fuel)].

Class 5: Fungicidal fungal agents, herbicides, preparations for destroying vermin; repellents insect, insecticides; algaecides, fungicides, herbicides.

Class 7: Gardening electric tools particularly garden vacuums, lawnmowers, shears, self-propelled mowers, chaff cutters, power saws, machinery for cultivation of lawn and soil, water pumps, in particular pond pumps, domestic water pumps; high-pressure washing pumps; path sweeping machines; snow blowing machines; electric window openers; swimming pool cleaning machines; composting machines, motorized cultivators, tools (hand-held -), other than hand-operated, knives for mowing machines, sharpening machines.

Class 8: Hand-held garden tools particularly lawn clippers, hand-operated lawnmowers, sickles, tools for weed control, grafting knives, shears, pruning shears, budding knives, whetstones, saws [hand tools], insecticide sprayers [hand tools], secateurs, broadaxes, spades, shovels, screwdrivers, pitchforks, hand-operated pond maintenance and cleaning apparatus and grabs, pocket knives with multi-purpose attachments; penknives; table cutlery [knives, forks and spoons] also plastic; fire bellows [hand tools]; insect sprays [hand tools].

Class 11: Barbecues, electric grills, watering apparatus, lamps, fairy lights for festive decoration, water fountains, ornamental fountains, installations for heating swimming pools, swimming pool chlorinating apparatus, filters for use with swimming pools, ponds and pool inserts made of plastic, artificial waterfalls, cascades and streams, components of solar lamps, electrical lamps for outdoor lighting; decorative lighting sets, cool boxes (electric -); coal stove igniter, igniters, ignitor to the grate for grilling.

Class 17: Plastic flexible pipes, garden hoses; seals; connectors (non-metallic -) for hoses; coupling pieces and connectors, not of metal, for connecting hoses to watering apparatus; filtering materials (included in class 17); fittings for pipes and hoses, mainly not of metal; flexible and rigid films of plastics, pond liners; padding made of non-woolen fabrics.

Class 18: Umbrellas, parasols, sun umbrellas, umbrella sticks, umbrella and parasol ribs, umbrella rings, walking sticks.

Class 20: Furniture; umbrella stands; stakes for plants or trees; sleeping bags for camping; deck chairs; air mattresses, not for medical purposes; garden furniture manufactured from wood or wicker or cane; garden wooden sheds, sheds for tools of wood, wood garden pavilions; ladders of wood; statuettes of wood; garden ornaments of wood, cork, wicker or cane; timber hooks for clothing; baskets of wood or wicker; pedestals for flower pots of wood; broom sticks of wood; wooden handles for tools; wooden rivets; wood ribbon; casings of wood, cork, reed, cane or wicker; support for plants from wood and cane; mats of wicker or cane; wood or wicker containers and closures therefor; wood boxes; wooden crates; placards and plates of wood; woven timber blinds; wooden poles; wicker basketry; wooden fences; pergolas of wood or wicker; woodsheds; wooden fittings for doors, beds, furniture and windows; bottle racks of wood and wicker; flower stands made of wood and wicker.

Class 21: Pots, flowerpots, stands and supports for plants and flowers, plant baskets, pots for plants and flowers, flower-pot covers, window boxes, trays for growing flowers and plants; trays, rails and racks for plants and flowers, metal pots, trays and holders for plants and flowers, decorative figurines and decorative stones from glass for exterior use, gardening gloves, sprinklers for watering flowers and plants, laundry drying racks, picnic baskets, household or kitchen utensils and containers.

Class 22: Tents, hammocks, ropes not of metal, awnings, tarpaulins, fishing nets, packing string.

Class 28: Games and playthings, gymnastic and sporting articles not included in other classes, decorations for Christmas trees.

Class 31: Fresh plants and flowers; plant seeds; horticultural products.

The contested goods are the following:

Class 4: Candles with insect repellents; citronella candle assortments; patio torches.

Class 5: Fungicides, herbicides, insecticides; herbicides for weeds and grass.

Class 7: Tools (not hand operated); parts of machines, namely tubes and pipes for liquids and gases, fittings therefor, in particular taps, valves, gaskets, connection pieces and connectors, the aforesaid goods of metal and plastic; large and small horticultural and agricultural apparatus (other than hand-operated), in particular lawnmowers, gardening machines, scarifying apparatus for lawns, lawn treatment apparatus, choppers, care and cleaning apparatus, spreaders, manure spreading and snow clearing apparatus; blowing machines; compressors; power operated saws; motorised shears for gardening and household purposes; subaggregates consisting of motors and engines, other than for land vehicles; pumps, included in class 7; mechanical dosing apparatus for manure and plant protection preparations; mechanical cutting apparatus; vacuum cleaners; mufflers for motors, engines and machines (other than motor vehicles); garden motors and engines; electric weed and grass cutters.

Class 8: Hand tools, hand-operated; large and small hand-operated horticultural and agricultural implements, in particular axes, tree pruners, pruners for trees, pruning knives, secateurs, pruning shears, pruning saws, lawn aerators, garden tools, lawnmowers, hand-operated scarifying apparatus for lawns, ditchers, rakes, border shears, hoes, Hainault scythes, trowels (gardening), lawn treatment apparatus, rakes, care and cleaning apparatus; spreaders, manure spreading and snow clearing apparatus, all of the aforesaid being hand-operated; hand-operated garden sprays; whetstones; hand-operated fruit pickers; hand-operated implements for destroying plant parasites; lawn clippers (hand-operated); hand-operated shears for gardening and household purposes; handheld sweeping tools; sprayers for devices for mixing manure and plant protection preparations, sprayers for spraying insecticides, insecticide atomisers, all the aforesaid goods being hand-operated; shovels [hand tools]; hoes, spades, rakes, rakes, plant wedges, masonry pointers, shovels for children; spades, hoes, rakes, rakes, scoops, digging forks [spading forks], garden cultivators, masonry pointers, edging knives; hand-operated tiller; folding saw and hacksaw assortments; handsaws; thistle extirpators [hand tools]; scissors; hand held tools, namely secateurs.

Class 9: Time switches, automatic, sensors for engines, transformers (electricity), cables for electrical purposes, extension cables for electrical purposes, plugs for electrical purposes; parts for the aforesaid goods, including in the form of parts for lighting systems, in particular for the garden; measuring apparatus; batteries and storage batteries, consisting of power stores; gloves for protection.

Class 12: Hand carts, wheelbarrows and hose carts; hose carts of plastic and/or metal.

Class 16: Grass and leaf disposal pouches; plastic bags.

Class 22: Canvas canopies; nets; awnings; tarpaulins; woven tarpaulins.

Class 25: Garden clothing, garden overalls, caps and hats.

Class 28: Swimming pools (toys).

Class 31: Agricultural, horticultural, forestry products; grains (seeds), plant seeds; flowers, flower bulbs; natural plants, seed germ for botanical purposes, seedlings; straw mulch.

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

The terms ‘in particular’, ‘particularly’ and ‘including’, used in the applicant’s and the opponent’s lists of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

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

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

Contested goods in Class 1

The contested horticulture chemicals, except fungicides, herbicides, insecticides and parasiticides; manures [listed twice]; earth for growing; humus and fertilisers; loam; compost [listed twice], albeit worded slightly differently in some cases, are also contained in the opponent’s list of goods, and these goods are therefore identical.

The contested seaweed (fertilizers); peat (fertiliser) are included in the broad category of the opponent’s fertilisers. Therefore, they are identical.

The contested manures for gardening, being mouldings for use in sprinklers are included in the broad category of the opponent’s manures. Therefore, they are identical.

The contested flower preservatives are chemical substances used to keep cut flowers fresh. They are included in the broad category of the opponent’s chemical products used in horticulture, except fungicides, herbicides, insecticides and anti-parasite, which include floricultural chemicals, except fungicides, herbicides, insecticides and anti-parasites. Therefore, they are identical.

The contested seed preserving substances; nutrient salts are included in the broad category of the opponent’s chemical products used in horticulture, except fungicides, herbicides, insecticides and anti-parasite. Therefore, they are identical.

The contested peat pots for horticulture are basically casings for plants consisting of peat, which is a brown soil-like material; therefore, they can have the same nature, purpose, producers, end users and distribution channels as the opponent’s earth for growing. Furthermore, these goods are in competition. Therefore, they are similar to a high degree.

Contested goods in Class 4

The contested candles with insect repellents; citronella candle assortments can have the same nature, producers, end users and distribution channels as the opponent’s tapers, a taper being a kind of candle. Therefore, they are similar.

The contested patio torches can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s tapers. Furthermore, they are in competition. Therefore, they are similar.

Contested goods in Class 5

The contested fungicides, herbicides, insecticides are also contained in the opponent’s list of goods, and these goods are therefore identical.

The contested herbicides for weeds and grass are included in the broad category of the opponent’s herbicides. Therefore, they are identical.

Contested goods in Class 6

The contested swimming pools can have the same producers, end users and distribution channels as the opponent’s swimming pool cleaning machines in Class 7. Furthermore, they are complementary to each other. Therefore, they are similar.

The contested structures of metal; transportable gazebos, summer houses and greenhouses of metal; pavilions consisting predominantly of metal; garden arches of metal are all kinds of structures usually placed in gardens. Although they are metal structures, they can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s garden wooden sheds, wood garden pavilions; pergolas of wood or wicker; woodsheds in Class 20. Furthermore, they are in competition. Therefore, they are similar.

The contested garden fences of metal can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s wooden fences in Class 20. Furthermore, they are in competition. Therefore, they are similar.

The contested trellises and posts for supporting plants and branches can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s stakes for plants or trees in Class 20. Furthermore, they are in competition. Therefore, they are similar.

The contested compost bins of metal; containers of metal for gardens; general storage containers for gardening and household apparatus can have the same nature, purpose, producers, end users, distribution channels and method of use as the opponent’s metal pots for plants and flowers; household or kitchen utensils and containers in Class 21. Furthermore, they are in competition. Therefore, they are similar.

The contested assortment boxes of metal for selling goods can have the same producers, end users, distribution channels and method of use as the opponent’s wood boxes in Class 20. Therefore, they are similar.

The contested handles of metal for gardening and household apparatus can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s wooden handles for tools in Class 20. Furthermore, they are in competition. Therefore, they are similar.

The contested mounting clips of metal for tools and other objects, in particular for hose, gardening and DIY apparatus, although they are made of metal, can have the same producers, end users and distribution channels as the opponent’s connectors (non-metallic -) for hoses; coupling pieces and connectors, not of metal, for connecting hoses to watering apparatus in Class 17. Therefore, they are similar.

The contested posts of metal for holding beverages can have the same producers, end users and distribution channels as the opponent’s household or kitchen utensils and containers in Class 21. Therefore, they are similar.

The contested hooks of metal can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s timber hooks for clothing in Class 20. Therefore, they are similar.

The contested plant hangers of metal can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s holders for plants and flowers in Class 21. Furthermore, they are in competition. Therefore, they are similar.

The contested basket hangers; basket posts are basically stands for hanging and supporting baskets, so they can have the same nature, producers, end users, distribution channels and method of use as the opponent’s stands and supports for plants and flowers; holders for plants and flowers in Class 21. Therefore, they are similar.

The contested nozzles of metal can have the same producers, end users and distribution channels as the opponent’s fittings for pipes and hoses, mainly not of metal in Class 17, since nozzles have a cylindrical or round spout at the end of a pipe, hose or tube, used to control a jet of gas or liquid. Therefore, they are similar.

The contested tomato cages can have the same purpose, producers, end users and distribution channels as the opponent’s pots, flowerpots, stands and supports for plants and flowers, pots for plants and flowers, flower-pot covers, trays for growing flowers and plants; trays, rails and racks for plants and flowers, metal pots, trays and holders for plants and flowers in Class 21. Furthermore, they are in competition. Therefore, they are similar.

The contested bird baths of metal; figures of metal for gardens, since they are used as garden decorations, can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s garden ornaments of wood, cork, wicker or cane in Class 20. Therefore, they are similar.

The contested plant rings can have the same nature, purpose, producers, end users and distribution channels as the opponent’s stands and supports for plants and flowers; holders for plants and flowers in Class 21. Therefore, they are similar.

The contested lawn and flower bed borders of metal; garden tiles, flower bed borders can have the same end users and distribution channels as the opponent’s pots, flowerpots; pots for plants and flowers, flower-pot covers, trays for growing flowers and plants; trays, rails and racks for plants and flowers, metal pots, trays and holders for plants and flowers in Class 21. Therefore, they are similar to a low degree.

Contested goods in Class 7

Reference is made to the explanation of the meaning of the term ‘particularly’ given above; bearing this in mind, the opponent’s gardening electric tools form a broad category that includes a number of electrical implements used in the garden or for gardening purposes. This broad category therefore includes various kinds of tools such as the contested power operated saws; mechanical dosing apparatus for manure and plant protection preparations; mechanical cutting apparatus; electric weed and grass cutters. Given that these contested goods are included in the broad category of the opponent’s goods, they are considered identical.

The contested tools (not hand operated) include, as a broader category, the opponent’s tools (hand-held -), other than hand-operated. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested vacuum cleaners include, inter alia, vacuum cleaners for gardening. These goods cannot be clearly separated from a broad category of the opponent’s gardening electric tools, which contains electric tools used for gardening purposes such as vacuum cleaners. It follows that the goods in question overlap and are therefore identical.

The contested motorised shears for gardening and household purposes include, inter alia, motorised shears for gardening. These goods cannot be clearly separated from a broad category of the opponent’s gardening electric tools, which contains electric tools used for gardening purposes such as shears. It follows from the above that the goods in question overlap and are therefore identical.

The contested pumps, included in class 7 include, inter alia, water pumps for gardening. These goods cannot be clearly separated from a broad category of the opponent’s gardening electric tools, which contains electric tools used for gardening purposes such as water pumps. It follows from the above that the goods in question overlap and are therefore identical.

The contested large and small horticultural and agricultural apparatus (other than hand-operated), in particular lawnmowers, gardening machines, scarifying apparatus for lawns, lawn treatment apparatus, choppers, care and cleaning apparatus, spreaders, manure spreading and snow clearing apparatus include, as a broader category, the opponent’s gardening electric tools. Even the wordings of some of the examples given by the opponent and by the applicant are the same (e.g. lawnmowers). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested garden motors and engines are motors and engines for gardening machines; therefore, they can have the same producers, end users and distribution channels as the opponent’s gardening electric tools. Furthermore, they are complementary to each other. Therefore, they are similar.

The contested parts of machines, namely tubes and pipes for liquids and gases, fittings therefor, in particular taps, valves, gaskets, connection pieces and connectors, the aforesaid goods of metal and plastic are specifically tubes and pipes for liquids and gases and fittings therefor, all of them made of metal and plastic and adapted for machines (see the explanatory notes on the scope of the goods under comparison above). As far as the contested parts of machines, namely tubes and pipes for liquids and gases, the aforesaid goods of metal and plastic are concerned, they can have the same purpose (i.e. that of transferring liquids or gases) and producers as the opponent’s plastic flexible pipes in Class 17, as both are tubes that may be used in connection with machines and through which liquid or gas flows. Therefore, they are similar to a low degree. The contested parts of machines, namely fittings for tubes and pipes for liquids and gases, in particular taps, valves, gaskets, connection pieces and connectors, the aforesaid goods of metal and plastic can have the same purpose (e.g. to join pieces of equipment) and producers as the opponent’s fittings for pipes and hoses, mainly not of metal in Class 17, since both refer to small parts of or pieces attached to equipment. Therefore, they are similar to a low degree.

The contested blowing machines; compressors; subaggregates consisting of motors and engines, other than for land vehicles; mufflers for motors, engines and machines (other than motor vehicles) are very specific machines or their parts, the nature and intended purpose of which are different from those of the opponent’s goods, mainly relating to horticulture and DIY. Furthermore, these goods do not have the same producers, relevant consumers or distribution channels as the opponent’s goods, nor are they in competition with or complementary to those goods. Therefore, they are dissimilar.

Contested goods in Class 8

Reference is made to the explanation of the meaning of the term ‘particularly’ given above; bearing this in mind, the opponent’s hand-held garden tools form a broad category that includes a number of non-electrical implements used in the garden or for gardening purposes. This broad category therefore includes various kinds of tools such as the contested spreaders, manure spreading and snow clearing apparatus, all of the aforesaid being hand-operated; hand-operated garden sprays; whetstones; hand-operated fruit pickers; hand-operated implements for destroying plant parasites; lawn clippers (hand-operated); handheld sweeping tools; sprayers for devices for mixing manure and plant protection preparations, sprayers for spraying insecticides, insecticide atomisers, all the aforesaid goods being hand-operated; shovels [hand tools]; hoes [listed twice], spades [listed twice], rakes [listed four times], plant wedges, shovels for children; scoops, digging forks [spading forks], garden cultivators, edging knives; hand-operated tiller; folding saw and hacksaw assortments; handsaws; thistle extirpators [hand tools]; scissors; hand held tools, namely secateurs. Given that these contested goods are included in the broad category of the opponent’s goods, they are considered identical.

The contested hand tools, hand-operated include, as a broader category, the opponent’s hand-held garden tools. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested large and small hand-operated horticultural and agricultural implements, in particular axes, tree pruners, pruners for trees, pruning knives, secateurs, pruning shears, pruning saws, lawn aerators, garden tools, lawnmowers, hand-operated scarifying apparatus for lawns, ditchers, rakes, border shears, hoes, Hainault scythes, trowels (gardening), lawn treatment apparatus, rakes, care and cleaning apparatus include, as a broader category, the opponent’s hand-held garden tools. Even the wordings of some of the examples given by the opponent and by the applicant are the same (e.g. pruning shears; secateurs). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested hand-operated shears for gardening and household purposes include, inter alia, hand-operated shears for gardening. These goods cannot be clearly separated from a broad category of the opponent’s hand-held garden tools, which contains hand-held and hand-operated tools used for gardening purposes such as shears. It follows from the above that the goods in question overlap and are therefore identical.

The contested masonry pointers [listed twice] are very specific hand-operated tools that belong the category of masonry accessories. The nature and intended purpose of these goods are different from those of the opponent’s goods, mainly relating to horticulture and DIY. Furthermore, these goods do not have the same producers, relevant consumers or distribution channels as the opponent’s goods, nor are they in competition with or complementary to those goods. Therefore, they are dissimilar.

Contested goods in Class 9

The contested gloves for protection can have the same nature, producers, end users, distribution channels and method of use as the opponent’s gardening gloves in Class 21. Therefore, they are similar to a low degree.

The contested time switches, automatic, sensors for engines, transformers (electricity), cables for electrical purposes, extension cables for electrical purposes, plugs for electrical purposes; parts for the aforesaid goods, including in the form of parts for lighting systems, in particular for the garden; batteries and storage batteries, consisting of power stores are very specific electric and electrical devices, the nature and intended purpose of which are different from those of the opponent’s goods, mainly relating to horticulture and DIY. Furthermore, these goods do not have the same producers, relevant consumers or distribution channels as the opponent’s goods, nor are they in competition with or complementary to those goods. Therefore, they are dissimilar.

The contested measuring apparatus is apparatus that shows the extent or amount or quantity or degree of something, the nature and intended purpose of which are different from those of the opponent’s goods, mainly relating to horticulture and DIY. Furthermore, these goods do not have the same producers, relevant consumers or distribution channels as the opponent’s goods, nor they are in competition with or complementary to those goods. Therefore, they are dissimilar.

Contested goods in Class 11

The contested fountains are also contained in the opponent’s list of goods, albeit worded slightly differently (as water fountains), and these goods are therefore identical.

The contested fairy lights are used for festive decoration and therefore (despite the slightly different wordings) they are identical to the opponent’s fairy lights for festive decoration.

The contested electric garden lights are included in the broad category of the opponent’s electrical lamps for outdoor lighting. Therefore, they are identical.

The contested solar-powered headlights; headlights; screen lights; light chain assortments; electric Chinese lanterns; flameless candle lanterns are various types of lamps and are included in the broad category of the opponent’s lamps. Therefore, they are identical.

The contested coal lighters for fireplaces and grills are included in the broad category of the opponent’s igniters. Therefore, they are identical.

The contested automatic watering apparatus; drip irrigation apparatus (other than hand-operated); motorised soil irrigation apparatus are included in the broad category of the opponent’s watering apparatus. Therefore, they are identical.

The contested luminaires include, as a broader category, the opponent’s lamps, fairy lights for festive decoration, electrical lamps for outdoor lighting. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested water filtering installations include, as a broader category, the opponent’s filters for use with swimming pools. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested lightbulbs can have the same purpose, producers, end users and distribution channels as the opponent’s lamps, fairy lights for festive decoration, electrical lamps for outdoor lighting; decorative lighting sets. Furthermore, they are complementary to each other. Therefore, they are similar.

The contested parts for the aforesaid goods [i.e. luminaires, electric garden lights, lightbulbs]; including the aforesaid goods [i.e. luminaires, electric garden lights, lightbulbs] in the form of parts for lighting systems, in particular for the garden can have the same nature, purpose, producers, end users, distribution channels and method of use as the opponent’s components of solar lamps. Therefore, they are similar.

The contested electromechanical and/or time-controlled water valves; taps [faucets] can have the same producers, end users and distribution channels as the opponent’s watering apparatus. Furthermore, they are complementary to each other, since the contested goods may be incorporated in the opponent’s goods. Therefore, they are similar.

The contested showers are washing devices and water installations used for personal hygiene, which may be installed in a bathroom or outdoors (e.g. in a garden or by a swimming pool). Therefore, these contested goods can have the same end users and distribution channels as the opponent’s watering apparatus. Therefore, they are similar.

Contested goods in Class 12

The contested hand carts, wheelbarrows can have the same producers, end users and distribution channels as the opponent’s hand-held garden tools in Class 8. Therefore, they are similar to a low degree.

The contested hose carts; hose carts of plastic and/or metal can have the same producers, end users and distribution channels as the opponent’s garden hoses in Class 17. Therefore, they are similar to a low degree.

Contested goods in Class 16

The contested grass and leaf disposal pouches; plastic bags, both include bags that can be used to collect and dispose of garden waste. They can have the same purpose, end users and distribution channels as the opponent’s household containers in Class 21, which include, inter alia, waste bins. Furthermore, these goods can be complementary to each other. Therefore, they are similar.

Contested goods in Class 17

The contested hoses, not of metal, in particular garden hoses, hose couplings of plastic, hose straps of plastic and/or metal; garden hose sets, hose assemblies include, as broader categories, the opponent’s garden hoses. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested hosepipes for watering include, as a broader category, the opponent’s garden hoses. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested irrigation spray hoses can have the same nature, purpose, producers, end users, distribution channels and method of use as the opponent’s garden hoses. Furthermore, they are in competition. Therefore, they are similar.

The contested tap connectors, connectors for tubes can have the same nature, purpose, producers, end users, distribution channels and method of use as the opponent’s connectors (non-metallic -) for hoses; coupling pieces and connectors, not of metal, for connecting hoses to watering apparatus. Therefore, they are similar.

Contested goods in Class 19

The contested fences, not of metal; garden fences of plastic and/or wood can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s wooden fences in Class 20. Furthermore, they are in competition. Therefore, they are similar to a high degree.

The contested transportable gazebos, summer houses and greenhouses of plastic; pavilions predominantly not of metal; non-metal greenhouses; miniature greenhouses are all kinds of light structures usually placed in gardens. Although some of them are made of plastic, they can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s garden wooden sheds, wood garden pavilions; pergolas of wood or wicker; woodsheds in Class 20. Furthermore, they are in competition. Therefore, they are similar.

The contested compost silos of plastic and/or wood can have the same nature, end users, distribution channels and method of use as the opponent’s household or kitchen utensils and containers in Class 21. Therefore, they are similar.

The contested garden ponds of plastic can have the same producers, end users and distribution channels as the opponent’s ponds and pool inserts made of plastic in Class 11. Furthermore, they are complementary to each other. Therefore, they are similar. In this regard, it should be noted that the original wording of the opponent’s ponds and pool inserts made of plastic in Polish is basenowe wkłady do sadzawek, wykonane z tworzyw sztucznych. The Opposition Division considers that it is apparent that the correct translation of the Polish specification is pool inserts for ponds, made of plastic, which, in essence, does not alter the nature or widen the scope of the goods for which the earlier mark is registered. Therefore, the Opposition Division will hereby proceed with the analysis and comparison of the goods in this case, bearing the correct translation of the abovementioned goods in mind.

The contested bird baths, not of metal; birdboxes, since they are used as garden decorations, can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s garden ornaments of wood, cork, wicker or cane in Class 20. Therefore, they are similar.

The contested lawn and flower bed borders of plastic and/or wood; lawn and flower bed borders of plastic or wood can have the same end users and distribution channels as the opponent’s pots, flowerpots; pots for plants and flowers, flower-pot covers, trays for growing flowers and plants; trays, rails and racks for plants and flowers, metal pots, trays and holders for plants and flowers in Class 21. Therefore, they are similar to a low degree.

The contested geotextiles, namely fabrics and foils for horticulture are specifically fabrics and foils for horticulture (see the explanatory notes on the scope of the goods under comparison above). These contested goods are intended to protect plants and crops against the sun, insects, frost or weeds, so they can have the same purpose, end users and distribution channels as the opponent’s herbicides, insecticides in Class 5. Therefore, they are similar to a low degree.

Contested goods in Class 20

The contested umbrella stands are also contained in the opponent’s list of goods, and these goods are therefore identical.

The contested sales display stands; lawn furniture; garden kneelers/seats are included in the broad category of the opponent’s furniture. Therefore, they are identical.

The contested garden figurines of wood are included in the broad category of the opponent’s garden ornaments of wood. Therefore, they are identical.

The contested handles of wood for gardening and household apparatus overlap with the broad category of the opponent’s wooden handles for tools. Therefore, they are identical.

The contested racks include, as a broader category, the opponent’s bottle racks of wood and wicker. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested posts for supporting plants, not of metal overlap with the broader category of the opponent’s support for plants from wood and cane. Therefore, they are identical.

The contested garden figurines of plastic can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s garden ornaments of wood, cork, wicker or cane. Furthermore, they are in competition. Therefore, they are similar.

The contested brooms can have the same producers, end users and distribution channels as the opponent’s broom sticks of wood. Furthermore, they are complementary to each other. Therefore, they are similar.

The contested handles of plastic for gardening and household apparatus can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s wooden handles for tools. Furthermore, they are in competition. Therefore, they are similar.

The contested handles of plastic and wood for gardening and household apparatus can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s wooden handles for tools. Furthermore, they are in competition. Therefore, they are similar.

The contested assortment boxes of plastic for selling goods can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s wood or wicker containers and closures therefor; wood boxes. Furthermore, they are in competition. Therefore, they are similar.

The contested garden obelisks can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s garden ornaments of wood, cork, wicker or cane. Furthermore, they are in competition. Therefore, they are similar.

The contested cushions can have the same producers, end users and distribution channels as the opponent’s air mattresses, not for medical purposes. Furthermore, they are complementary to each other. Therefore, they are similar.

The contested mounting clips of plastic for tools and other objects, in particular for hose, household, gardening and DIY apparatus and objects can have the same producers, end users and distribution channels as the opponent’s connectors (non-metallic -) for hoses; coupling pieces and connectors, not of metal, for connecting hoses to watering apparatus in Class 17. Therefore, they are similar.

The contested knee pads for household and gardening purposes can have the same producers, end users and distribution channels as the opponent’s gardening gloves in Class 21. Therefore, they are similar.

The contested pinwheels are used, inter alia, as garden ornaments. Therefore, these goods can have the same nature, purpose, producers, end users, distribution channels and method of use as the opponent’s garden ornaments of wood, cork, wicker or cane. Furthermore, they are in competition. Therefore, they are similar.

The contested containers of plastic for garden and household purposes, and industrial and storage purposes; composters can have the same nature, purpose, producers, end users, distribution channels and method of use as the opponent’s household or kitchen utensils and containers in Class 21. Furthermore, they are in competition. Therefore, they are similar.

The contested holders and brackets for lighting fixtures, not of metal can have the same end users and distribution channels as the opponent’s lamps, electrical lamps for outdoor lighting; decorative lighting sets in Class 11. Furthermore, they are used in conjunction with each other. Therefore, they are similar to a low degree.

The contested boards for hanging tools and other objects, in particular for hoses, household, gardening and DIY apparatus and objects can have the same producers, end users and distribution channels as the opponent’s wooden fittings for furniture. Therefore, they are similar to a low degree.

Contested goods in Class 21

The contested flower pots are also contained in the opponent’s list of goods, albeit using a slightly different wording, and these goods are therefore identical.

The contested holders for flowers and plants [flower arranging] are included in the broad category of the opponent’s holders for plants and flowers. Therefore, they are identical.

The contested watering cans; containers of metal for garden and household purposes; compost containers for household use are included in the broad category of the opponent’s household containers. Therefore, they are identical.

The contested watering can sprinklers; sprinklers for flower pots and plant boxes are included in the broad category of the opponent’s sprinklers for watering flowers and plants. Therefore, they are identical.

The contested sprinklers [listed three times] include, as a broader category, the opponent’s sprinklers for watering flowers and plants. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested plant boxes include, as a broader category, the opponent’s window boxes, which are used as containers for plants and flowers installed on window ledges. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested hand-operated syringes include, inter alia, syringes used for cooking or baking. These goods overlap with the opponent’s kitchen utensils, which also include hand-operated syringes. Therefore, they are identical.

The contested hand-operated sprayers and spraying apparatus for garden and household purposes; spray lances can have the same nature, purpose, producers, end users, distribution channels and method of use as the opponent’s sprinklers for watering flowers and plants. Furthermore, they are in competition. Therefore, they are similar.

The contested electric apparatus for attracting and destroying insects can have the same purpose, producers, end users and distribution channels as the opponent’s insect sprays [hand tools] in Class 8. Furthermore, they are in competition. Therefore, they are similar.

The contested bird feed stations; bird feed dispensers, since they are used also as garden decorations, can have the same purpose, producers, end users, distribution channels and method of use as the opponent’s garden ornaments of wood, cork, wicker or cane in Class 20. Therefore, they are similar.

The contested garden work shoes can have the same producers, end users and distribution channels as the opponent’s gardening gloves, since they are items to be worn while gardening. Therefore, they are similar.

The contested crystal glasses can have the same nature, purpose, producers, end users, distribution channels and method of use as the opponent’s household or kitchen utensils and containers. Furthermore, they are in competition. Therefore, they are similar.

The contested brooms [listed three times] and brush goods, jointing brushes; sponges; soap dispensers; brooms for children can have the same producers, end users and distribution channels as the opponent’s household or kitchen utensils and containers. Therefore, they are similar to a low degree.

Contested goods in Class 22

The contested tarpaulins; awnings are also contained in the opponent’s list of goods, and these goods are therefore identical.

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

The contested nets include, as a broader category, the opponent’s fishing nets. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested canvas canopies are cloth covers used for protection from the sun, rain or weather in general. The opponent’s tarpaulins are waterproof cloths used as a covering. It follows from the above that the goods in question can have the same nature, purpose, producers, end users, distribution channels and method of use. Furthermore, they are in competition. Therefore, they are similar to a high degree.

Contested goods in Class 25

The contested garden clothing can have the same producers, end users and distribution channels as the opponent’s gardening gloves in Class 21, since they are items to be worn while gardening. Therefore, they are similar.

The contested garden overalls, caps and hats can have the same producers, end users and distribution channels as the opponent’s gardening gloves in Class 21, since they are items to be worn while gardening. Therefore, they are similar.

Contested goods in Class 28

The contested swimming pools (toys) are included in the broad category of the opponent’s games and playthings. Therefore, they are identical.

Contested goods in Class 31

The contested horticultural products; plant seeds; flowers, natural plants, albeit worded slightly differently in some cases (e.g. flowers, natural plants), are also contained in the opponent’s list of goods, and these goods are therefore identical.

The contested flower bulbs; seed germ for botanical purposes, seedlings; straw mulch are included in the broad category of the opponent’s horticultural products. Therefore, they are identical.

The contested grains (seeds) are included in the broad category of the opponent’s plant seeds. Therefore, they are identical.

The contested agricultural products are a broad category of products that result from the cultivation of the soil and farming. They overlap with the opponent’s plant seeds, which include, inter alia, seeds derived from agricultural plants. Therefore, they are identical.

The contested forestry products are a broad category of products derived from, or usually grown in, a forest, which could be for consumption or forage for animals or for commercial use, such as trees. They overlap with the opponent’s fresh plants, which also include bushes and trees. Therefore, they are identical.

Relevant public – degree of attention

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

In the present case, the goods found to be identical or similar to varying degrees are directed at public at large (consumers who do DIY) as well as at business customers with specific professional knowledge or expertise. The degree of attention of the relevant public may vary from average to high, depending on the price and frequency of purchase of these goods.

The signs

Earlier trade mark

Contested sign

The relevant territory is Poland.

As explained above, the relevant public is both the public at large and business consumers. For reasons of procedural economy, given that the general public is usually more prone to confusion, the comparison will focus on the non-specialist part of the public.

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

Both signs are figurative marks composed of word and figurative elements.

The earlier trade mark consists of the verbal element ‘gardenic’ written in standard white lower case letters on a black rectangular background. In the middle of this verbal element, above the letters ‘de’, is a figurative element in green with a black outline that resembles the leaves of a plant.

A significant part of the non-specialist part of the Polish-speaking public will not associate the word ‘gardenic’ of the earlier mark with any meaning, as it is derived from the English word ‘garden’, which, furthermore, has no similar equivalent in Polish. Therefore, it is meaningless and distinctive to an average degree for a substantial part of the non-specialist part of the relevant public.

The applicant argued in its response to the opponent’s submissions that the frequently and commonly used word ‘garden’ cannot be monopolised by the opponent, since it is an absolutely standard expression in the DIY sector. Therefore, according to the applicant, the word ‘garden’, taken alone, is directly descriptive and not merely allusive. As regards this argument, first, the earlier mark comprises, inter alia, the word ‘gardenic’ and not the word ‘garden’ as such. Moreover, as far as the inherent distinctiveness of these two words is concerned, it is considered that neither of them will be understood by the non‑specialist Polish-speaking public, and, therefore, they are deemed to be distinctive to an average degree in relation to the relevant goods. Although the applicant correctly argued in its observations that the expression ‘garden’ might be understood by an English speaker as a simple reference to the characteristics of the goods in question, it should be pointed out that the assessment of the distinctiveness of the particular components of the marks under comparison must be carried out with regard to the relevant territory, which is in the present case Poland; Polish consumers are not presumed to have a knowledge of English. In the light of the foregoing, this argument of the applicant must be rejected.

As regards the contested sign, it is a composite sign made up of the words ‘Garden’ and ‘CREATIONS’, written over two lines in a standard typeface, placed on a rectangular background with rounded corners. The word ‘Garden’ appears in the top part of the sign in white title case characters, whereas the word ‘CREATIONS’ appears in the bottom part of the sign in black upper case letters. To the right of the word ‘CREATIONS’ is a depiction of the leaves of a plant. The rectangular background is divided into two unequal and different-coloured parts. The upper, slightly larger part is black and contains the word ‘Garden’, and the lower part is grey and contains the word ‘CREATIONS’ and the figurative element depicting leaves.

Although the word ‘Garden’ is meaningful in English (‘a piece of ground adjoining a house, used for growing flowers, fruit, or vegetables’), it is neither descriptive of any characteristics of the goods in question nor non-distinctive for the non-specialist part of the Polish-speaking public, which will not associate this word with any meaning. Therefore, it is distinctive to an average degree for this part of the relevant public.

Similar considerations apply to the second verbal component of the contested sign, ‘CREATIONS’, which has no meaning in Polish either, and therefore, it has an average degree of distinctive character from the perspective of the majority of the non-specialist part of the Polish public.

The graphic elements of the signs, namely their rectangular backgrounds, the colours of those backgrounds and their overall graphic arrangements, are likely to be perceived by the relevant consumers as merely decorative. Consequently, the graphic elements have only a limited impact on the consumer’s perception of the signs. The coinciding device of the leaves of a plant is considered weak because it alludes to the intended purpose of the relevant goods, that is, that they are goods for use in connection with gardening and growing plants.

The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.

Some consumers may perceive the element ‘Garden’ of the contested sign as more visually outstanding because its letters are slightly larger than those of the element ‘CREATIONS’.

Visually, the top verbal element, ‘Garden’, of the contested sign is wholly included in the beginning of the verbal element of the earlier trade mark, namely ‘gardenic’. Furthermore, the signs have in common a very similar figurative element consisting of two leaves, which, however, as stated above, is weak. On the other hand, the signs differ in the last two letters, ‘ic’, of the word ‘gardenic’ in the earlier trade mark, and in the word ‘CREATIONS’ of the contested sign. They also differ in the graphic arrangement of their verbal and figurative elements, and there are also some differences in the colours of those elements.

However, in this regard it must be pointed out 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Furthermore it has been established that consumers generally tend to focus on the element to the left or at the top of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right and from top to bottom, which makes the part placed at the left or top of the sign (the initial part) the one that first catches the attention of the reader.

In the light of the abovementioned considerations, it can be concluded that the conflicting signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of their initial part, ‛garden’, present identically in both signs. However, the pronunciation differs in the sound of the last two letters, ‘ic’, of the word ‘gardenic’ in earlier trade mark and in the sound of the word ‘CREATIONS’ in the contested sign.

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

Conceptually, reference is made to the conclusions reached above regarding the meanings of the signs and their elements.

Although the signs as a whole do not have any meaning for a substantial part of the non-specialist part of the public in the relevant territory, they are conceptually similar to the extent that they coincide in the figurative device of the leaves of a plant referring to the same concept. Therefore, the conflicting signs are conceptually similar to a low degree.

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

Distinctiveness of the earlier 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 in question from the perspective of a substantial part of the non-specialist part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak figurative element in the mark as stated above in section c) of this decision.

Global assessment, other arguments and conclusion

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

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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

As was concluded above, the contested goods in Classes 1, 4, 5, 6, 7, 8, 9, 11, 12, 16, 17, 19, 20, 21, 22, 25, 28 and 31 are partly identical, partly similar to different degrees and partly dissimilar to the opponent’s goods. Furthermore, for a significant part of the non-specialist Polish-speaking public, the earlier trade mark has a normal degree of distinctiveness in relation to the relevant goods.

The marks in dispute are visually and aurally similar to an average degree and conceptually similar to a low degree. This similarity between the signs results in particular from the coincidence in their initial, distinctive, part, ‘garden’. On the other hand the differences between the signs lie in the additional last letters, ‘ic’, of the word ‘gardenic’ in the earlier mark and in the verbal element ‘CREATIONS’ in the contested sign. Furthermore, the signs differ in the graphical arrangement of their elements and in their use of colour. However, as stated in section c) of this decision, the figurative components of signs usually have a lower impact on the consumer than their verbal components. This is especially true in the present case since the depiction of leaves in both signs has been found weak. In addition, consumers generally tend to focus on the element to the left or at the top of a sign when being confronted with a trade mark.

Taking into account the abovementioned similarities between the signs in question, the Opposition Division considers that they might lead a significant part of the non-specialist public in Poland, even with a high degree of attention, to think that the contested goods found to be identical or similar to varying degrees come from the same undertaking as those of the earlier mark, or economically-linked undertakings.

With regard to the focus on the non-specialist public, if a significant part of the relevant public for the goods at issue may be confused as to their origin, this is sufficient. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused.

In addition, account must be 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 with 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-specialist Polish-speaking public and therefore the opposition is partly well-founded on the basis of the opponent’s Polish trade mark registration No 271 939.

It follows from the above that the contested sign must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark, even for those found to be similar to a low degree, as the fact that the signs coincide in their initial, distinctive, verbal component leads to a likelihood of confusion.

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.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component, ‘gardenic’, constitute a ‘family of marks’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent did not prove that it uses a family of ‘gardenic’ marks, and moreover that it uses such a family in the same fields as those covered by the contested sign. Therefore, this claim is dismissed.

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

Polish trade mark registration No 272 976:

This mark is registered for goods in Classes 1, 4, 5, 7, 8, 11, 17, 18, 20, 21, 22, 28 and 31.

Polish trade mark registration No 271 941:

This mark is registered for goods in Classes 1, 4, 5, 7, 8, 11, 17, 18, 20, 21, 22, 28 and 31.

Polish trade mark registration No 271 938:

This mark is registered for goods in Classes 1, 4, 5, 7, 8, 11, 17, 18, 20, 21, 22, 28 and 31.

Polish trade mark registration No 271 942:

This mark is registered for goods in Classes 1, 4, 5, 7, 8, 11, 17, 18, 20, 21, 22, 28 and 31.

Polish trade mark registration No 252 329:

This mark is registered for goods in Classes 1, 11, 18, 20, 22 and 28.

Polish trade mark registration No 252 331:

This mark is registered for goods in Classes 1, 11, 18, 20, 22 and 28.

Polish trade mark registration No 252 332:

This mark is registered for goods in Classes 1, 11, 18, 20, 22 and 28.

Polish trade mark registration No 252 330:

This mark is registered for goods in Classes 1, 11, 18, 20, 22 and 28.

Polish trade mark registration No 275 231:

This mark is registered for goods in Class 31.

The other earlier rights invoked by the opponent cover the same or a narrower scope of goods. The outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Bekir GÜVEN

Martin MITURA

Solveiga BIEZA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

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