OPPOSITION No B 2 917 923

The Smiley Company SPRL, Avenue Louise n° 523, 1050 Bruxelles, Belgium (opponent), represented by FPS Partnerschaft von Rechtsanwälten mbB, Grosse Theaterstrasse 31, 20354 Hamburg, Germany (professional representative)

a g a i n s t

House of Smily S.L., Calle San Bartolome, Num. 164, Bloque II, Planta 9, Puerta D, 03560 El Campello (Alicante), Spain (applicant), represented by JTV Patentes & Marcas, Ortega y Gasset, 11-3°-D, 03600 Elda (Alicante), Spain (professional representative).

On 19/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 917 923 is partially upheld, namely for the following contested goods and services:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; perfumery, essential oils, non-medical cosmetics, non-medicated hair lotions; non-medicated dentifrices.

Class 16: Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites (except furniture); adhesives for stationery or household purposes; artists’ materials and drawing materials; paint brushes; instructional and teaching material; plastic sheets, film and bags for wrapping and packaging; printing blocks, printers’ type.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paintbrushes); brush-making materials; articles for cleaning purposes; glass, unworked or semi-worked, except building glass; articles of glassware, porcelain and earthenware.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Class 32: Beer; mineral waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 35: Franchise-issuing relating to assistance in the operation or management of a commercial or industrial company, retailing and wholesaling in shops and via global computer networks of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, non-medicated soaps, perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions, non-medicated dentifrices, paper and cardboard, printed matter, bookbinding material, photographs, stationery and office requisites, other than furniture, adhesives for stationery or household purposes, artists’ and drawing materials, paintbrushes, instructional and teaching materials, plastic sheets, films and bags for wrapping and packaging, printing blocks, household or kitchen utensils and containers, combs and sponges, brushes (except paintbrushes), brush-making materials, articles for cleaning purposes, unworked or semi-worked glass, other than building glass, glassware, porcelain and earthenware, rice, tapioca and sago, flour and preparations made from cereals, bread, pastries and confectionery, edible ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, beers, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups.

2. European Union trade mark application No 16 387 524 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

Preliminary Remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 387 524 for the figurative mark , namely against all the goods and services in Classes 3, 16, 21, 30, 32 and 35. The opposition is based on:

• European Union trade mark registration No 731 711,

• European Union trade mark registration No 13 304 530,

• European Union trade mark registration No 13 304 589,

• European Union trade mark registration No 14 273 387,

• European Union trade mark registration No 13 304 613, and

• European Union trade mark registration No 13 309 737.

All the earlier European Union trade mark registrations are registered for the word mark ‘SMILEY’.

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

PROOF OF USE

In accordance with 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 filing or, where applicable, the date of priority 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 has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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

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

1. The goods and services

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

• Earlier EUTM No 731 711 (EUTM 1)

Class 3: Soaps, cosmetics, cosmetic preparations for slimming purposes, rust removing preparations, sun-tanning preparations (cosmetics), fabric softeners (for laundry use), cosmetic preparations for baths, shaving soap, cotton wool sticks for cosmetic purposes, skin whitening creams, laundry bleach, scented wood, shining preparations (polish), hair dyes, waving preparations for the hair, false eyelashes, shoe wax, depilatory wax, parquet floor wax, polishing wax, preservatives for leather (polishes), decorative transfers for cosmetic purposes, cosmetic sets, cosmetics for animals, shoe polishes, waxes for leather, preparations for cleaning waste pipes, scouring solutions, bleaching preparations (decolorants) for cosmetic purposes, grease-removing preparations other than for use in manufacturing processes, make-up removing preparations, dentifrices, depilatory preparations, deodorants for personal use, stain removing preparations, scale removing preparations for household purposes, detergents other than those for use in manufacturing processes and for medical purposes, eau de toilette, anti-static preparations for household purposes, emery paper, emery cloth, polish for furniture and flooring, incense, make-up, fumigation preparations (perfumes), windscreen cleaning liquids, essential oils, bleach, hair lacquer, laundry preparations, sachets for perfuming linen, lotions for cosmetic purposes, after-shave lotions, hair lotions, tissues impregnated with cosmetic lotions, preparations for cleaning dentures, nail care preparations, false nails, cotton wool for cosmetic purposes, polishing paper, sandpaper, abrasive paper, wallpaper cleaning preparations, perfumes, cosmetic preparations for skin and hair care, paint stripping preparations, pumice stone, alum stones (antiseptic), adhesives for attaching false hair, perfumed pots-pourri, shaving preparations, shampoos, mouth washes, not for medical purposes, toiletries, varnish-removing preparations.

• Earlier EUTM No 13 304 530 (EUTM 2)

Class 16: Adhesive tapes for stationery or household purposes, playing cards, posters, staples for offices, albums, almanacs, water colours (paintings), indoor aquaria, writing slates, engravings, lithographic works of art, atlases, stickers (stationery), bibs of paper, loose-leaf binders, beer mats, tickets, pads (stationery), boxes of cardboard or paper, pamphlets, paintbrushes, blotters, seals (stamps), coffee filters of paper, calendars, tracing patterns, note books, cards, greeting cards, cardboard articles, catalogues, tags for index cards, files (office requisites), glue for stationery or household purposes, confetti, letter trays, napkins for babies of paper or cellulose (disposable), wrappers (stationery), writing chalk, transfers (decalcomanias), tissues of paper for removing make-up, drawing instruments, graphic prints, adhesive tape dispensers (office requisites), folders for paper, document files (stationery), flags (of paper), typewriters, electric or non-electric, inkstands, writing instruments, rubber erasers, erasing products, elastic bands for offices, wrapping paper, ink, inkwells, signboards of paper or cardboard, envelopes (stationery), towels of paper, labels, not of textile, announcement cards (stationery), paper sheets (stationery), plastic bubble packs (for wrapping or packaging), index cards (stationery), forms (printed), school supplies (stationery), terrestrial globes, graphic representations, toilet paper, pictures, printed matter, newspapers, writing paper, table linen of paper, lithographs, books, book marks, booklets, manuals (handbooks), bags for microwave cooking, embroidery designs (patterns), handkerchiefs of paper, stationery, paper, paperweights, modelling paste, house painters’ rollers, paintings (pictures), framed or unframed, plastic film for wrapping, office perforators, photographs, paintbrushes, prints (engravings), drawing boards, plans, pen cases, chequebook holders, pencils, pencil holders, pen holders, portraits, postcards, prospectuses, printed publications, thumbtacks, ledgers (books), rulers (for drawing), bookbindings, indexes, magazines, blinds of paper, table mats of paper, bags (envelopes, pouches) of paper or plastics, for packaging, book-ends, writing tablets, fountain pens, pencil sharpeners, inking pads, stamps (seals), postage stamps, transparencies (stationery), but excluding banknote, coin, bill, counter or token validators, coin-operated, counter-operated or token operated mechanisms or apparatus for handling banknotes, coins, bills, counters or tokens.

• Earlier EUTM No 13 304 589 (EUTM 3)

Class 21: Non-electric kitchen utensils and containers (not of precious metal or coated therewith), combs, brushes (except paint brushes), drinking troughs, thermally insulated containers for food, litter boxes (trays) for pets, watering devices, works of art of porcelain, terra-cotta or glass, table plates, not of precious metal, pressure cookers, non-electric, brooms, shaving brushes, cocktail sticks, baby baths (portable), heaters for feeding bottles, non-electric, bottle gourds, beer glasses, glass jars (carboys), bread bins, soap boxes, tea caddies, not of precious metal, boxes of metal, for dispensing paper towels, boxes of glass, bowls (basins), demijohns, candy boxes, not of precious metal, corkscrews, kettles, non-electric, bottles, bottle openers, pitchers, toothbrushes, perfume burners, cabarets (trays), not of precious metal, coffee services, not of precious metal, coffee-pots, non-electric, not of precious metal, decanters, menu card holders, stew-pans, chamois leather for cleaning, shoe horns, shoe trees (stretchers), egg cups, not of precious metal, baskets, for household purposes, not of precious metal, cosmetic utensils, covers for dishes, pot lids, crystal (glassware), pots, mixing spoons (kitchen utensils), cooking pot sets, cookery moulds, cooking utensils, non-electric, toothpicks, cutting boards for the kitchen, deodorising apparatus for personal use, trivets (table utensils), toilet paper holders, soap dispensers, signboards of porcelain or glass, sponges for household purposes, toilet sponges, dusting cloths (rags), earthenware, strainers for household purposes, flower pots, gardening gloves, gloves for household purposes, ice buckets, cool boxes, portable, non-electric, moulds (ice cube), goblets, not of precious metal, drinking flasks for travellers, insect traps, clothes pegs, crumb trays, moulds (kitchen utensils), toilet cases, picnic baskets (including dishes), soap, paper towel and toilet paper dispensers, perfume vaporisers, ironing boards, pepper pots, not of precious metal, goods of porcelain, knife rests for the table, pottery, dustbins, dishes for table waste, napkin rings, not of precious metal, egg timers (sand glasses), insulating bags, services (tableware), not of precious metal, napkin holders, not of precious metal, piggy banks, not of metal, cloths for cleaning, urns, not of precious metal, glass (receptacles).

• Earlier EUTM No 14 273 387 (EUTM 4)

Class 30: Sugar, rice, tapioca, sago; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

• Earlier EUTM No 13 304 613 (EUTM 5)

Class 32: Beers; mineral and aerated waters; fruit drinks and fruit juices; vegetable juices; syrups, isotonic drinks.

• Earlier EUTM No 13 309 737 (EUTM 6)

Class 35: Advertising, business management, business administration, office functions, arranging newspaper subscriptions (for others), business management and organisation consultancy, outdoor advertising, import-export agencies, commercial information agencies, advertising agencies, dissemination of advertising matter, office machines and equipment rental, employment agencies, book-keeping, personnel management consultancy, publicity columns preparation, shop window dressing, demonstration of goods, direct mail advertising, professional management of artistic businesses, document reproduction, auctioneering, marketing studies, efficiency experts, organisation of exhibitions for commercial or advertising purposes, computerized file management, organisation of fairs for commercial or advertising purposes, hotel administration, rental of advertising space, publicity material rental, modelling for advertising or sales promotion, marketing research, opinion polling, personnel recruitment, employment agencies, economic forecasting, sales promotion (for others), publication of publicity texts, public relations, relocation services for businesses, secretarial services, statistical information, but none of the aforesaid services relating to the validation of banknotes, coins, bills or tokens or relating to or utilising banknote, coin, bill, counter or token validators, coin-operated, counter-operated or token operated mechanisms or apparatus for handling banknotes, coins, bills, counters or tokens.

The contested goods and services are the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; perfumery, essential oils, non-medical cosmetics, non-medicated hair lotions; non-medicated dentifrices.

Class 16: Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites (except furniture); adhesives for stationery or household purposes; artists’ materials and drawing materials; paint brushes; instructional and teaching material; plastic sheets, film and bags for wrapping and packaging; printing blocks, printers’ type.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paintbrushes); brush-making materials; articles for cleaning purposes; glass, unworked or semi-worked, except building glass; articles of glassware, porcelain and earthenware.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Class 32: Beer; mineral waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 35: Franchise-issuing relating to assistance in the operation or management of a commercial or industrial company, retailing and wholesaling in shops and via global computer networks of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, non-medicated soaps, perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions, non-medicated dentifrices, paper and cardboard, printed matter, bookbinding material, photographs, stationery and office requisites, other than furniture, adhesives for stationery or household purposes, artists’ and drawing materials, paintbrushes, instructional and teaching materials, plastic sheets, films and bags for wrapping and packaging, printers’ type, printing blocks, household or kitchen utensils and containers, combs and sponges, brushes (except paintbrushes), brush-making materials, articles for cleaning purposes, unworked or semi-worked glass, other than building glass, glassware, porcelain and earthenware, coffee, tea, cocoa and artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pastries and confectionery, edible ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, beers, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages.

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 3

The contested bleaching preparations and other substances for laundry use are included in the broad category of the opponent’s laundry preparations (EUTM 1). Therefore, they are identical.

The contested cleaning preparations overlap with the opponent’s soaps (EUTM 1). Therefore, they are identical.

The contested polishing preparations include, as a broader category, the opponent’s polishing wax (EUTM 1). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested scouring preparations include, as a broader category, the opponent’s scouring solutions (EUTM 1). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested abrasive preparations overlap with the opponent’s abrasive paper (EUTM 1). Therefore, they are identical.

The contested non-medicated soaps are included in the broad category of the opponent’s soaps (EUTM 1). Therefore, they are identical.

The contested perfumery includes, as a broader category, the opponent’s perfumes (EUTM 1). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Essential oils are identically contained in both lists of goods (EUTM 1).

The contested non-medical cosmetics are included in the broad category of the opponent’s cosmetics (EUTM 1). Therefore, they are identical.

The contested non-medicated hair lotions are included in the broad category of the opponent’s hair lotions (EUTM 1). Therefore, they are identical.

The contested non-medicated dentifrices are included in the broad category of the opponent’s dentifrices (EUTM 1). Therefore, they are identical.

Contested goods in Class 16

Paper and cardboard; printed matter; photographs; stationery; paint brushes are identically contained in the list of contested goods and the list of goods of EUTM 2 (including synonyms).

The contested bookbinding material includes, as a broader category, or overlaps with, the opponent’s bookbindings (EUTM 2). Therefore, they are identical.

The contested office requisites (except furniture) include, as a broader category, the opponent’s files (office requisites) (EUTM 2). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested adhesives for stationery or household purposes include, as a broader category, the opponent’s adhesive tapes for stationery or household purposes (EUTM 2). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested artists’ materials overlap with the opponent’s drawing instruments (EUTM 2). Therefore, they are identical.

The contested drawing materials include, as a broader category, the opponent’s drawing instruments (EUTM 2). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested instructional and teaching material overlaps with the opponent’s printed matter (EUTM 2). Therefore, they are identical.

The contested printers’ type has the same purpose (i.e. printing letters and numerals in an orderly form on paper) as the opponent’s typewriters, electric or non-electric (EUTM 2). These goods can coincide in producers and distribution channels. Furthermore, they are complementary. They are, therefore, highly similar.

Contested goods in Class 21

The contested household or kitchen utensils and containers include, as a broader category, the opponent’s non-electric kitchen utensils and containers (not of precious metal or coated therewith) (EUTM 3). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Combs; brushes (except paintbrushes) are identically contained in both lists of goods (including synonyms) (EUTM 3).

The contested sponges include, as a broader category, the opponent’s sponges for household purposes (EUTM 3). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested brush-making materials are included in, or overlap with, the opponent’s brushes (except paint brushes) (EUTM 3). Therefore, they are considered identical to the opponent’s goods.

The contested articles for cleaning purposes include, as a broader category, the opponent’s chamois leather for cleaning (EUTM 3). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested articles of glassware, porcelain and earthenware include, as a broader category, the opponent’s works of art of porcelain, terra-cotta or glass (EUTM 3). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested glass, unworked or semi-worked, except building glass overlaps with the opponent’s works of art of glass (EUTM 3). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 30

Rice; tapioca; sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice are identically contained in both lists of goods (EUTM 4).

The contested coffee, tea, cocoa and artificial coffee are similar to the opponent’s fruit drinks (EUTM 4), as they can have the same end users and distribution channels, as well as producers. Moreover, these goods are in competition.

Contested goods in Class 32

Beer; mineral waters; fruit beverages (drinks) and fruit juices; syrups are identically contained in both lists of goods (EUTM 5).

The contested other non-alcoholic drinks include, as a broader category, or overlap with, the opponent’s isotonic drinks (EUTM 5). Therefore, they are identical.

The contested other preparations for making beverages are highly similar to the opponent’s fruit drinks (EUTM 5) because they have the same purpose, the same distribution channels and the same end users. Furthermore, they are in competition.

Contested services in Class 35

The contested franchise-issuing relating to assistance in the operation or management of a commercial or industrial company is included in the opponent’s business management (EUTM 6). Therefore, they are identical.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

By analogy, the same principle applies to wholesale services.

Therefore, the contested retailing and wholesaling in shops and via global computer networks of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, non-medicated soaps, perfumery, essential oils, non-medicated cosmetics, non-medicated hair lotions, non-medicated dentifrices are similar to a low degree to the opponent’s laundry preparations; soaps; polishing wax; scouring solutions; abrasive paper; perfumes; essential oils; cosmetics; hair lotions; dentifrices (EUTM 1).

The contested retailing and wholesaling in shops and via global computer networks of paper and cardboard, printed matter, bookbinding material, photographs, stationery and office requisites, other than furniture, adhesives for stationery or household purposes, artists’ and drawing materials, paintbrushes, instructional and teaching materials, plastic sheets, films and bags for wrapping and packaging, printing blocks are similar to a low degree to the opponent’s paper and cardboard; printed matter; paint brushes; photographs; stationery; bookbindings; files (office requisites); adhesive tapes for stationery or household purposes; drawing instruments (EUTM 2).plastic bubble packs (for wrapping or packaging) and plastic film for wrapping (EUTM 2).

The contested The contested retailing and wholesaling in shops and via global computer networks of household or kitchen utensils and containers, combs and sponges, brushes (except paintbrushes), brush-making materials, articles for cleaning purposes, unworked or semi-worked glass, other than building glass, glassware, porcelain and earthenware are similar to a low degree to the opponent’s non-electric kitchen utensils and containers (not of precious metal or coated therewith); combs; brushes (except paintbrushes); sponges for household purposes; chamois leather for cleaning; works of art of porcelain, terra-cotta or glass (EUTM 3).

The contested retailing and wholesaling in shops and via global computer networks of rice, tapioca and sago, flour and preparations made from cereals, bread, pastries and confectionery, edible ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice are similar to a low degree to the opponent’s rice; tapioca; sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice (EUTM 4).

The contested retailing and wholesaling in shops and via global computer networks of beers, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups are similar to a low degree to the opponent’s beer; mineral waters; fruit beverages (drinks) and fruit juices; syrups; isotonic drinks (EUTM 5).

Similarity between retail or wholesale services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail or wholesale services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the case of the contested printers’ type; coffee, tea, cocoa and artificial coffee; other preparations for making beverages, since the goods are not identical to the opponent’s goods, as seen above.

Therefore, the contested retailing and wholesaling in shops and via global computer networks of printers’ type; coffee, tea, cocoa and artificial coffee; other preparations for making beverages are dissimilar to the all the opponent’s goods and services. Indeed, these services do not have the same nature, purpose, distribution channels, producers or method of use as any of the opponent’s goods and services. Moreover, the contested services and the opponent’s good and services are not in competition or complementary to each other.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and at professionals.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

SMILEY
Earlier EUTMs	Contested sign

The relevant territory is the European Union.

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

For ease of reference, in the present section of the decision, the Opposition Division will refer to the earlier EUTMs as ‘the earlier sign’.

The earlier sign is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is depicted in upper or lower case letters, or in a combination thereof. Consequently, the difference in the signs under comparison in this regard is immaterial.

The earlier sign is the single-word mark ‘SMILEY’. Being an English word, ‘SMILEY’ will be associated, by the English-speaking part of the public, as well as by the part of the public that uses the English word in its own language (e.g. the French-speaking part), with a symbol, formed of the characters :-), that represents a smiling face. The remaining part of the public, which does not have a good command of English or does not use the word as such, will not associate the sign with any meaning. In any case, the word ‘smiley’ has an average degree of inherent distinctiveness, as it has no direct relation to the relevant goods and services.

The contested sign is a figurative sign composed of the word ‘Smily’ written in white, handwriting-style letters against a dark grey or black label in the form of a curved shape. Part of the public will perceive the word ‘Smily’ as a misspelling of the English word ‘smiley’ and will, therefore, associate the word with the meaning of a smiling face. For the remaining part of the public, the word ‘Smily’ has no meaning. Therefore, the word ‘Smily’ is distinctive for the entire relevant public.

As regards the figurative element of the contested sign and the stylisation of its verbal element, they will be perceived as ordinary graphical means of bringing the verbal elements to the attention of the public. The public is used to such depictions and perceives them as ornamental elements; it will automatically attribute more trade mark significance to the verbal element of the sign. This is because 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 as the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The contested sign has no element that can be considered more dominant (eye-catching) than others.

Visually, the signs coincide in the string of letters ‘SMIL*Y’. They differ in the penultimate letter, ‘E’, of the earlier sign and in the figurative element as well as the stylisation of the word element of the contested sign. However, the differing elements of the contested sign have less impact that the word element ‘Smily’. The earlier mark and the contested sign’s word element have the same beginning and the same ending. The difference stemming from the additional penultimate letter of the earlier sign cannot outweigh the similarities between those words, since consumers tend not to attribute very much importance to the central parts of words (01/02/2012, T‑353/09, mtronix, EU:T:2012:40, § 42).

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, for the part of the public that pronounces /ly/ and /ley/ identically, the pronunciation of the signs is identical. For the part of the public that pronounces the syllables /ley/ and /ly/ differently, the pronunciation of the signs coincides in the sound of the letters ‘SMIL’, present identically in both signs. However, the pronunciation differs in the last vowel sound of the signs, /ey/ in the earlier sign and /y/ in the contested sign. That being said, the differing sounds are, nonetheless, very close.

Therefore, for a part of the public the signs are aurally identical and for another part they are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

In the scenario in which the public understands the English word ‘SMILEY’ and perceives the contested sign as a misspelling of the same word, the signs are conceptually identical.

In the scenario in which the public understands the word ‘SMILEY’ but does not perceive the contested sign as a misspelling of the same word, one of the signs will not be associated with any meaning, and therefore the signs are not conceptually similar.

For the part of the public that does not perceive any meaning in the signs, a conceptual comparison is not possible, and therefore the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Distinctiveness of the earlier marks

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

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

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

5. Global assessment, other arguments and conclusion

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 varying degrees target the public at large and business consumers, the public’s degree of attention varies from average to high. The signs are visually similar to an average degree. Aurally, the signs are at least highly similar. From a conceptual point of view, the signs are identical or not conceptually similar, or the conceptual comparison remains neutral, depending on the part of the public considered. The earlier marks have a normal degree of distinctiveness.

The earlier marks and the verbal element of the contested sign differ only in the additional penultimate letter of the earlier sign, ‘E’. This difference will be seen as a misspelling or even go unnoticed.

In this regard, 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).

Therefore, bearing in mind that the figurative element and the stylisation of the contested sign have less impact than its verbal element, and the slight difference between this verbal element and the earlier marks, the relevant public, even when displaying a high degree of attention, is likely to confuse the marks.

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

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 varying degrees to those of the earlier trade mark. The opposition also succeeds in relation to the services found to be similar to a low degree, since the signs are considered very similar overall.

The rest of the contested services 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 services cannot be successful.

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

The Opposition Division

Klaudia MISZTAL

Cindy BAREL

Marta GARCÍA COLLADO

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.