OPPOSITION Nо B 2 923 392

Prgco, LLC, One American Boulevard, 44145 Cleveland, United States of America (opponent), represented by Bardehle Pagenberg Partnerschaft mbB Patentanwälte, Rechtsanwälte, Prinzregentenplatz 7, 81675 München, Germany (professional representative)

a g a i n s t

Top Commerce KG, Ortsstraße 8, 3492 Diendorf Am Kamp, Austria (applicant), represented by Preslmayr.Legal Rechtsanwälte GmbH, Rotenturmstraße 16‑18 Stiege 2, 7.OG, 1010 Wien, Austria (professional representative).

On 27/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 923 392 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

On 03/07/2017, the opponent filed an opposition against all the goods and services of European Union trade mark application No 16 476 012 (figurative mark). The opposition is based on European Union trade mark registration No 11 149 804 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

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

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

a) The goods and services

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

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; absorbent sheets of paper or plastic for foodstuff packaging; address plates for addressing machines; address stamps; addressing machines; adhesive bands for stationery or household purposes; adhesive tape dispensers [office requisites]; adhesive tapes for stationery or household purposes; adhesives [glues] for stationery or household purposes; advertisement boards of paper or cardboard; albums; almanacs; announcement cards [stationery]; aquarelles; architects’ models; atlases; bags (conical paper -); bags [envelopes, pouches] of paper or plastics, for packaging; bags for microwave cooking; balls for ball-point pens; bibs of paper; binding strips [bookbinding]; biological samples for use in microscopy [teaching materials]; blackboards; blotters; bookbinding apparatus and machines [office equipment]; bookbinding cloth; bookbinding cords; bookbinding material; bookbindings; bookends; booklets; bookmarkers; books; bottle envelopes of cardboard or paper; bottle wrappers of cardboard or paper; boxes of cardboard or paper; bubble packs (plastic -) for wrapping or packaging; cabinets for stationery [office requisites]; calculating tables; calendars; canvas for painting; carbon paper; cardboard; cardboard articles; cardboard tubes; cards; cases for stamps [seals]; catalogues; chalk for lithography; chalk holders; chaplets; charcoal pencils; chart pointers, non-electronic; chromos; cigar bands; clipboards; clips for offices; coasters of paper; coffee filters (paper -); comic books; compasses for drawing; composing frames [printing]; composing sticks; copying paper [stationery]; correcting fluids [office requisites]; correcting ink [heliography]; correcting tapes [office requisites]; covers [stationery]; cream containers of paper; credit card imprinters, non-electric; decalcomanias; diagrams; document files [stationery]; document holders [stationery]; document laminators for office use; drawer liners of paper, perfumed or not; drawing boards; drawing instruments; drawing materials; drawing pads; drawing pens; drawing sets; drawing squares; drawing t-squares; duplicators; elastic bands for offices; electrocardiograph paper; electrotypes; embroidery designs [patterns]; engraving plates; engravings; envelope sealing machines, for offices; envelopes [stationery]; erasing products; erasing shields; etching needles; etchings; fabrics for bookbinding; face towels of paper; figurines [statuettes] of papier mâché; files [office requisites]; filter paper; filtering materials [paper]; finger-stalls [office requisites]; flags of paper; flower-pot covers of paper; flyers; folders for papers; folders [stationery]; forms, printed; fountain pens; French curves; galley racks [printing]; garbage bags of paper or of plastics; geographical maps; glue for stationery or household purposes; gluten [glue] for stationery or household purposes; graining combs; graphic prints; graphic representations; graphic reproductions; greeting cards; gummed cloth for stationery purposes; gummed tape [stationery]; gums [adhesives] for stationery or household purposes; hand labelling appliances; hand-rests for painters; handbooks [manuals]; handkerchiefs of paper; handwriting specimens for copying; hat boxes of cardboard; hectographs; histological sections for teaching purposes; holders for checkbooks [cheque books]; holders for stamps [seals]; house painters’ rollers; humidity control sheets of paper or plastic for foodstuff packaging; index cards [stationery]; indexes; Indian inks; ink; ink sticks; ink stones [ink reservoirs]; inking pads; inking ribbons; inking ribbons for computer printers; inking sheets for document reproducing machines; inking sheets for duplicators; inkstands; inkwells; isinglass for stationery or household purposes; labels, not of textile; ledgers [books]; letter trays; letters [type]; lithographic stones; lithographic works of art; lithographs; loose-leaf binders; luminous paper; magazines [periodicals]; manifolds [stationery]; marking chalk; marking pens [stationery]; mats for beer glasses; mimeograph apparatus and machines; modelling clay; modelling materials; modelling paste; modelling wax, not for dental purposes; moisteners for gummed surfaces [office requisites]; moisteners [office requisites]; molds for modelling clays [artists’ materials]; money clips; mounting photographs (apparatus for -); musical greeting cards; napkins of paper for removing make-up; newsletters; newspapers; nibs; nibs of gold; note books; numbering apparatus; numbers [type]; office perforators; office requisites, except furniture; oleographs; packaging material made of starches; packing paper; pads [stationery]; paint boxes [articles for use in school]; paint trays; paintbrushes; painters’ brushes; painters’ easels; paintings [pictures], framed or unframed; palettes for painters; pamphlets; pantographs [drawing instruments]; paper; paper bows; paper clasps; paper-clips; paper for recording machines; paper knives [cutters] office requisites; paper ribbons; paper sheets [stationery]; paper shredders for office use; paper tapes and cards for the recordal of computer programmes; paperweights; papier mâché; parchment paper; passport holders; pastels [crayons]; patterns for dressmaking; patterns for making clothes; pen cases; pen clips; pen wipers; pencil holders; pencil lead holders; pencil leads; pencil sharpeners, electric or non-electric; pencil sharpening machines, electric or non-electric; pencils; penholders; pens [office requisites]; perforated cards for jacquard looms; periodicals; photo-engravings; photograph stands; photographs [printed]; pictures; placards of paper or cardboard; place mats of paper; plans; plastic cling film, extensible, for palletization; plastic film for wrapping; plastics for modelling; portraits; postage meters for office use; postage stamps; postcards; posters; printed matter; printed publications; printed timetables; printers’ blankets, not of textile; printers’ reglets; printing blocks; printing sets, portable [office requisites]; printing type; prints [engravings]; prospectuses; punches [office requisites]; radiograms (paper for -); rollers for typewriters; rubber erasers; rulers (drawing -); school supplies [stationery]; scrapers [erasers] for offices; sealing compounds for stationery purposes; sealing machines for offices; sealing stamps; sealing wafers; sealing wax; seals [stamps]; self-adhesive tapes for stationery or household purposes; sheets of reclaimed cellulose for wrapping; shields [paper seals]; signboards of paper or cardboard; silver paper; slate pencils; song books; spools for inking ribbons; square rulers; stamp pads; stamp stands; stamps [seals]; stands for pens and pencils; stapling presses [office requisites]; starch paste [adhesive] for stationery or household purposes; stationery; steatite [tailor’s chalk]; steel letters; steel pens; stencil cases; stencil plates; stencils; stencils [stationery]; stickers [stationery]; table linen of paper; table napkins of paper; tablecloths of paper; tablemats of paper; tags for index cards; tailors’ chalk; teaching materials [except apparatus]; terrestrial globes; thumbtacks; tickets; toilet paper; towels of paper; tracing cloth; tracing needles for drawing purposes; tracing paper; tracing patterns; trading cards other than for games; transparencies [stationery]; trays for sorting and counting money; typewriter keys; typewriter ribbons; typewriters, electric or non-electric; vignetting apparatus; viscose sheets for wrapping; watercolor saucers (artists’ -); waxed paper; wood pulp board [stationery]; wood pulp paper; wristbands for the retention of writing instruments; writing board erasers; writing brushes; writing cases [sets]; writing cases [stationery]; writing chalk; writing instruments; writing materials; writing or drawing books; writing pads; writing paper; writing slates; xuan paper for Chinese painting and calligraphy.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; alpenstocks; attaché cases; backpacks; bags for campers; bags for climbers; bags for sports; bandoliers; bands of leather; beach bags; bits for animals [harness]; blinders [harness]; boxes of leather or leather board; boxes of vulcanised fibre; bridles [harness]; bridoons; briefcases; butts [parts of hides]; canes; card cases [notecases]; cases, of leather or leatherboard; casings, of leather, for springs; cat o’ nine tails; cattle skins; chain mesh purses; chamois leather, other than for cleaning purposes; chin straps, of leather; clothing for pets; collars for animals; coverings of skins [furs]; covers for horse-saddles; curried skins; fastenings for saddles; frames for umbrellas or parasols; fur; furniture coverings of leather; game bags [hunting accessories]; garment bags for travel; gold beaters’ skin; gut for making sausages; halters; handbag frames; handbags; harness fittings; harness for animals; harness straps; hat boxes of leather; haversacks; horse blankets; horse collars; horseshoes; imitation leather; key cases; kid; knee-pads for horses; laces (leather -); leather leads; leather straps; leather twist; leather, unworked or semi-worked; leatherboard; moleskin [imitation of leather]; music cases; muzzles; net bags for shopping; nose bags [feed bags]; pads for horse saddles; parasols; pelts; pocket wallets; pouch baby carriers; pouches, of leather, for packaging; purses; reins; riding saddles; saddle trees; saddlery; school bags; shopping bags; sling bags for carrying infants; slings for carrying infants; stirrup leathers; stirrups; stirrups (parts of rubber for -); straps for skates; straps for soldiers’ equipment; straps of leather [saddlery]; suitcase handles; suitcases; tool bags of leather, empty; traces [harness]; travelling bags; travelling sets [leatherware]; travelling trunks; trimmings of leather for furniture; trunks [luggage]; umbrella covers; umbrella handles; umbrella or parasol ribs; umbrella rings; umbrella sticks; umbrellas; valises; valves of leather; vanity cases, not fitted; walking cane handles; walking stick seats; wheeled shopping bags; whips; luggage, handbags, toiletry cases sold empty, leather shopping bags, all purpose sports bags, tote bags, attaché cases, briefcase-type portfolios and briefcases; purses, women’s handbags, clutches, make-up bags sold empty, suitcases, carry on luggage, travel kits sold empty, packing cases, shoulder bags, back packs, book bags, waist packs, key cases, pocket wallets, passport wallets, school bags; luggage; overnight suitcases; small suitcases; suitcases.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; air cushions, not for medical purposes; air mattresses, not for medical purposes; air pillows, not for medical purposes; ambroid bars; ambroid plates; animal hooves; animal horns; armchairs; baby changing mats; baby changing platforms; bakers’ bread baskets; bamboo; bamboo curtains; barrels, not of metal; baskets, not of metal; bead curtains for decoration; bed casters, not of metal; bed fittings, not of metal; bedding, except linen; beds; beds for household pets; bedsteads of wood; beehives; benches [furniture]; bins, not of metal; bins of wood or plastic; birds (stuffed -); boarding stairs, not of metal, mobile, for passengers; bolsters; bolts (door -) not of metal; bolts, not of metal; book rests [furniture]; bottle caps, not of metal; bottle casings of wood; bottle closures, not of metal; bottle racks; broom handles, not of metal; brush mountings; bungs, not of metal; busts of wood, wax, plaster or plastic; cabinet work; cable clips, not of metal; cable or pipe clips of plastics; cards (plastic key -), not encoded; carts for computers [furniture]; cask hoops, not of metal; cask stands, not of metal; casks, not of metal; casks of wood for decanting wine; chests for toys; chests of drawers; chopping blocks [tables]; claws (animal -); closures, not of metal, for containers; clothes hooks, not of metal; coat hangers; coathooks, not of metal; coatstands; coffin fittings, not of metal; coffins; containers, not of metal, for liquid fuel; containers, not of metal [storage, transport]; coral; cork bands; corks; corks for bottles; corozo; costume stands; cots; counters [tables]; covers for clothing [wardrobe]; crates; cupboards; curtain holders, not of textile material; curtain hooks; curtain rails; curtain rings; curtain rods; curtain rollers; curtain tie-backs; cushions; deck chairs; decorations of plastic for foodstuffs; desks; desks (standing -); dinner wagons [furniture]; display boards; display stands; divans; dog kennels; door fittings, not of metal; door handles, not of metal; doors for furniture; dowels, not of metal; drain traps [valves] of plastic; draughtman’s tables; dressing tables; easy chairs; edgings of plastic for furniture; embroidery frames; fans for personal use, non-electric; filing cabinets; fireguards; fishing baskets; flagpoles; floating containers, not of metal; flower-pot pedestals; flower-stands [furniture]; fodder racks; foundations for beehives; funerary urns; furniture; furniture casters, not of metal; furniture fittings, not of metal; furniture of metal; furniture partitions of wood; furniture shelves; garment covers [storage]; gun racks; hairdressers’ chairs; hampers [baskets]; hand-held mirrors [toilet mirrors]; handling pallets, not of metal; hat stands; head-rests [furniture]; high chairs for babies; hinges, not of metal; honeycombs; horn, unworked or semi-worked; hospital beds; house numbers, not of metal, non-luminous; identification bracelets, not of metal, for hospitals; index cabinets [furniture]; indoor window blinds [shades] furniture; infant walkers; inflatable publicity objects; interior textile window blinds; ivory, unworked or semi-worked; kennels for household pets; keyboards for hanging keys; knife handles, not of metal; knobs, not of metal; ladders of wood or plastics; latches, not of metal; lecterns; letter boxes, not of metal or masonry; library shelves; loading gauge rods, not of metal, for railway waggons [wagons]; loading pallets, not of metal; lockers; locks, not of metal, for vehicles; locks, other than electric, not of metal; magazine racks; mannequins; massage tables; mats for infant playpens; mats, removable, for sinks; mattresses; meat chests, not of metal; medicine cabinets; meerschaum; mirror tiles; mirrors [looking glasses]; mobiles [decoration]; moldings for picture frames; mooring buoys, not of metal; mother-of-pearl, unworked or semi-worked; nameplates, not of metal; nesting boxes; nesting boxes for household pets; newspaper display stands; numberplates, not of metal; nuts, not of metal; office furniture; oyster shells; packaging containers of plastic; paper blinds; pet cushions; picture frame brackets; picture frames; pillows; placards of wood or plastics; plaited straw, except matting; plate racks; playpens for babies; poles, not of metal; pulleys of plastics for blinds; racks [furniture]; rattan; reeds [plaiting materials]; reels, not of metal, non-mechanical, for flexible hoses; reels of wood for yarn, silk, cord; rivets, not of metal; saw horses; school furniture; scratching posts for cats; screens [furniture]; screws, not of metal; scythe handles, not of metal; seats; seats of metal; sections of wood for beehives; settees; shells; shelves for filing-cabinets [furniture]; shelves for storage; shoulder poles [yokes]; showcases [furniture]; sideboards; signboards of wood or plastics; silvered glass [mirrors]; slatted indoor blinds; sleeping bags for camping; sofas; spring mattresses; stag antlers; stair rods; stakes for plants or trees; stands for calculating machines; statues of wood, wax, plaster or plastic; statuettes of wood, wax, plaster or plastic; staves of wood; steps [ladders], not of metal; stools; stoppers, not of metal; straw edgings; straw mattresses; straw plaits; stuffed animals; table tops; tables; tables of metal; tanks, not of metal nor of masonry; taps for casks, not of metal; tea carts; tent pegs, not of metal; tool handles, not of metal; tortoiseshell; tortoiseshell imitation; towel closets [furniture]; towel dispensers, fixed, not of metal; transport pallets, not of metal; trays, not of metal; trestles [furniture]; trolleys [furniture]; troughs, not of metal, for mixing mortar; typing desks; umbrella stands; valves, not of metal, other than parts of machines; vats, not of metal; vice benches, not of metal; wall plugs, not of metal; washstands [furniture]; water beds, not for medical purposes; water-pipe valves of plastic; wax figures; waxcomb for beehives; whalebone, unworked or semi-worked; wickerwork; wind chimes [decoration]; winding spools, not of metal, non-mechanical, for flexible hoses; window fittings, not of metal; wood ribbon; work benches; works of art, of wood, wax, plaster or plastic; woven timber blinds [furniture]; writing desks; yellow amber.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; air pistols [toys]; amusement machines, automatic and coin-operated; arcade video game machines; archery implements; ascenders [mountaineering equipment]; backgammon games; bags especially designed for skis and surfboards; bait (artificial fishing -); balls for games; bar-bells; baseball gloves; batting gloves [accessories for games]; bells for Christmas trees; billiard balls; billiard cue tips; billiard cues; billiard markers; billiard table cushions; billiard tables; bingo cards; bite indicators [fishing tackle]; bite sensors [fishing tackle]; bladders of balls for games; board games; bob-sleighs; body boards; body-building apparatus; bowling apparatus and machinery; bows for archery; boxing gloves; building blocks [toys]; building games; butterfly nets; camouflage screens [sports articles]; candle holders for Christmas trees; caps for pistols [toys]; chalk for billiard cues; checkerboards; checkers [games]; chess games; chessboards; chips for gambling; Christmas tree stands; Christmas trees of synthetic material; clay pigeon traps; clay pigeons [targets]; climbers’ harness; coin-operated billiard tables; confetti; conjuring apparatus; cosaques [toy fireworks]; counters [discs] for games; creels [fishing traps]; cricket bags; cups for dice; darts; detonating caps [toys]; dice; discuses for sports; divot repair tools [golf accessories]; dolls; dolls’ beds; dolls’ clothes; dolls’ feeding bottles; dolls’ houses; dolls’ rooms; dominoes; edges of skis; elbow guards [sports articles]; electronic targets; exercisers [expanders]; fairground ride apparatus; fencing gauntlets; fencing masks; fencing weapons; fish hooks; fishing tackle; flippers for swimming; floats for fishing; flying discs [toys]; games; games (apparatus for -); gaming machines for gambling; gloves for games; golf bags, with or without wheels; golf clubs; golf gloves; gut for fishing; gut for rackets; gymnastics (appliances for -); hang gliders; harness for sailboards; harpoon guns [sports articles]; hockey sticks; horseshoe games; hunting game calls; ice skates; in-line roller skates; jigsaw puzzles; kaleidoscopes; kite reels; kites; knee guards [sports articles]; landing nets for anglers; lines for fishing; lures for hunting or fishing; mah-jong; marbles for games; masts for sailboards; men’s athletic supporters [sports articles]; mobiles [toys]; nets for sports; ninepins; novelties for parties, dances [party favors, favours]; ornaments for Christmas trees, except illumination articles and confectionery; pachinkos; paintball guns [sports apparatus]; paintballs [ammunition for paintball guns] sports apparatus; paper party hats; paragliders; parlor games; physical exercises (machines for -); piñatas; play balloons; playing balls; playing cards; plush toys; poles for pole vaulting; portable games with liquid crystal displays; practical jokes [novelties]; protective paddings [parts of sports suits]; punching bags; puppets; quoits; rackets; radio-controlled toy vehicles; rattles [playthings]; reels for fishing; ring games; rocking horses; rods for fishing; roller skates; rollers for stationary exercise bicycles; rosin used by athletes; roulette wheels; sailboards; scale model kits [toys]; scale model vehicles; scent lures for hunting or fishing; scooters [toys]; scrapers for skis; scratch cards for playing lottery games; seal skins [coverings for skis]; shin guards [sports articles]; shuttlecocks; skateboards; skating boots with skates attached; ski bindings; skis; skittles; sleighs [sports articles]; slides [playthings]; sling shots [sports articles]; slot machines [gaming machines]; snow for Christmas trees (artificial -); snow globes; snowboards; snowshoes; soap bubbles [toys]; sole coverings for skis; spinning tops [toys]; spring boards [sports articles]; starting blocks for sports; stationary exercise bicycles; strings for rackets; stuffed toys; surf boards; surf skis; surfboard leashes; swimming belts; swimming jackets; swimming kick boards; swimming pools [play articles]; swings; tables for indoor football; tables for table tennis; targets; teddy bears; tennis ball throwing apparatus; tennis nets; theatrical masks; toy masks; toy pistols; toy vehicles; toys; toys for domestic pets; trampolines; twirling batons; video game machines; water wings; waterskis; wax for skis; weight lifting belts [sports articles].

Class 35: Advertising; business management; business administration; office functions; accounting; accounts (drawing up of statements of -); administrative processing of purchase orders; advertising by mail order; arranging newspaper subscriptions for others; arranging subscriptions to telecommunication services for others; auctioneering; auditing; bill-posting; business appraisals; business consultancy (professional -); business information; business inquiries; business investigations; business management and organization consultancy; business management assistance; business management consultancy; business management of hotels; business management of performing artists; business management of sports people; business organization consultancy; business research; commercial administration of the licensing of the goods and services of others; commercial information agencies; commercial information and advice for consumers [consumer advice shop]; commercial or industrial management assistance; compilation of information into computer databases; compilation of statistics; cost price analysis; data search in computer files for others; demonstration of goods; direct mail advertising; dissemination of advertising matter; distribution of samples; document reproduction; economic forecasting; efficiency experts; employment agencies; fashion shows for promotional purposes (organization of -); file management (computerized -); import-export agencies; invoicing; layout services for advertising purposes; management (advisory services for business -); marketing; marketing research; marketing studies; modelling for advertising or sales promotion; news clipping services; office machines and equipment rental; on-line advertising on a computer network; opinion polling; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; outsourcing services [business assistance]; payroll preparation; personnel management consultancy; personnel recruitment; photocopying services; presentation of goods on communication media, for retail purposes; price comparison services; procurement services for others [purchasing goods and services for other businesses]; production of advertising films; psychological testing for the selection of personnel; public relations; publication of publicity texts; publicity; publicity agencies; publicity columns preparation; publicity material rental; radio advertising; relocation services for businesses; rental of advertising space; rental of advertising time on communication media; rental of photocopying machines; rental of vending machines; sales promotion for others; secretarial services; shop window dressing; shorthand; sponsorship search; systemization of information into computer databases; tax preparation; telemarketing services; telephone answering for unavailable subscribers; television advertising; transcription; typing; updating of advertising material; word processing; writing of publicity texts; retail services and on-line retail services for paper, cardboard and goods made from these materials, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging (not included in other classes), printers’ type, printing blocks, greeting cards, social expression products, namely, note cards, box note cards, postcards, place cards, invitation cards, gift wrap, gift tags, gift boxes, paper gift bags, gift books, tissue paper, ribbons, bows, stickers, non-personalised stationery, envelopes, journals, writing tables, postcards and thank you notes, leather and imitations of leather, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, luggage, handbags, toiletry cases sold empty, leather shopping bags, all purpose sports bags, tote bags, attaché cases, briefcase-type portfolios and briefcases, purses, women’s handbags, clutches, make-up bags sold empty, suitcases, carry on luggage, travel kits sold empty, packing cases, shoulder bags, back packs, book bags, waist packs, key cases, pocket wallets, passport wallets, school bags, luggage, overnight suitcases, small suitcases, suitcases, furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

The contested goods and services are the following:

Class 3: Cosmetics; perfume.

Class 35: Retailing and wholesaling, including via the internet, in the fields of cosmetics and perfumes.

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

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification

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

Contested goods in Class 3

The contested cosmetics; perfume are dissimilar to all the opponent’s goods and services. The contested perfume are fragrances used for enhancing the odour or aroma of the body, or of other items, by giving them a pleasant smell, and the broad category of the contested cosmetics are preparations used in personal hygiene for beautification purposes and for preventing the body from smelling unpleasant. To conclude, the purpose of the contested goods is to clean, protect and change a person’s appearance.

According to the similarity criteria established above, these goods do not have anything in common with any of the opponent’s goods in Class 16 (paper and cardboard, printed matter, bookbinding material, photographs, stationery and office requisites, drawing materials and materials for artists), in Class 18 (leather and imitations of leather, and goods made of these materials and not included in other classes, luggage and carrying bags, umbrellas and parasols, walking sticks, whips, harnesses and saddlery, collars, leashes and clothing for animals) or in Class 20 (furniture, mirrors, picture frames, containers, not of metal, for storage or transport).

Furthermore, the contested goods are dissimilar to the opponent’s services in Class 35, which are, broadly speaking, advertising, business management, business administration and office functions, and also to the retail services in relation to various goods in Classes 16, 18 or 20. Apart from being different in nature, since services are intangible whereas goods are tangible, the goods and services in conflict serve different needs and target a different public. The opponent’s services are business-oriented services aimed at supporting or helping other businesses to do or improve business, and are, therefore in principle, directed at the professional public, whereas the contested goods are aimed at the general public.

In addition, the opponent’s retail services and online-retail services for make-up bags sold empty, toiletry cases sold empty (particularly addressed by the opponent) are dissimilar to the contested cosmetics, perfume in Class 3. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary. The contested cosmetics, perfume in Class 3 are dissimilar to the goods sold at retail, namely make-up bags sold empty and toiletry cases sold empty. The opponent’s make-up bags and toiletry cases sold at retail cannot be considered to be complementary to the contested goods since they are not adapted for particular cosmetics. Although make-up bags and toiletry cases serve for storing and carrying cosmetic items, this is not, in itself, enough to find these goods similar.

Contested services in Class 35

Retail services of specific goods and retail services of other goods have the same nature as both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

Similarity is found between those retail services where the specific goods concerned are commonly retailed together in the same outlets and they target the same public.

The contested retailing, including via the internet, in the fields of cosmetics and perfumes are similar to the opponent’s retail services and online-retail services for make-up bags sold empty, toiletry cases sold empty. Despite the dissimilarity between the goods at retail (as noted by the applicant), they are retailed in the same outlets and target the same public.

Although wholesale services and retail services target a different public, they have the same nature and purpose, since both aimed to bring together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods. Furthermore, the subjects of these services (the goods themselves), while not exactly the same, are still goods that are closely connected in the market. The public could take the view that a wholesaler also offers retail services relating to, not only the same, but also similar categories of goods, and vice versa. Therefore, the contested wholesaling, including via the internet, in the fields of cosmetics and perfumes are similar to the opponent’s retail services and online-retail services for make-up bags sold empty, toiletry cases sold empty.

b) Relevant public – degree of attention

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

In the present case, the services found to be similar are directed at the public at large and at business customers.

The degree of attention is considered average.

The Opposition Division does not share the applicant’s view that cosmetics and perfumes traditionally tend to belong to the luxury market and are expensive goods. While there are perfumes and cosmetic articles that are relatively expensive, in general these are consumer products purchased on a regular basis and are offered in a variety of commercial stores such as supermarkets, drugstores, pharmacies, kiosks, gas stations, etc. Moreover, there is nothing in the specification of the applicant’s list of goods that suggests that these are expensive goods and would require more thorough consideration and care when purchasing them.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the contested sign are meaningful for the English-speaking part of the public in the European Union. This part of the public will break down the single verbal element ‘MYPARFUMERIE’ into the words ‘MY’ and ‘PARFUMERIE’ and will understand them as alluding to the goods sold at retail, despite the misspelled word ‘PARFUMERIE’. Therefore, the whole verbal element is weak for this part of the public. The expression ‘PASSION FOR LIFE’ will be perceived by that public as a promotional slogan and is, therefore, non-distinctive.

The Opposition Division will first examine the opposition from the perspective of the English-speaking part of the public for whom the verbal elements (contained only in the contested sign) are weak/non-distinctive. This is the most advantageous scenario for the opponent in that the differing elements are weak/non-distinctive.

The contested sign contains a figurative element depicting a bird that may be perceived as a hummingbird, in its upper-right corner. This figurative element has no particular meaning in relation to the goods and services and is distinctive to a normal degree.

The verbal element ‘MYPARFUMERIE’ is visually dominant within the contested sign by virtue of its size and central position. Moreover, 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). This premise applies in the present case since the figurative element is significantly smaller and is placed in a less prominent position. Therefore, it plays a secondary role.

The earlier mark is a depiction of a bird that may also be perceived as a hummingbird. It too is distinctive for the services in question.

Visually, the signs coincide in the depictions of the abovementioned bird, which are both black with a white eye, facing left with raised wings. However, these depictions also differ.

The bird in the earlier mark has a long, slightly curved beak and one visible wing that has striking black and white markings that delineate the feathers. In addition, the irregular lines of the silhouette outline show the endings of different feathers. Its tail curls underneath and tail feathers are visible.

However, in the contested sign, the bird has a shorter beak and two wings are visible. The wing feathers are not particularly visible in the silhouette, except on careful inspection. In addition, its tail is more rounded and has no visible feathers.

The signs differ visually in the verbal elements of the contested sign, which will have more impact on consumers than the figurative elements. The Opposition Division considers that the signs in conflict are visually similar to at most a very low degree.

Aurally, purely figurative signs are not subject to a phonetic assessment. As the earlier mark is purely figurative, an aural comparison is not possible.

Conceptually, the public in the relevant territory may perceive the signs as containing a depiction of a silhouette of a bird that could be a hummingbird and, to this extent, there is a conceptual similarity between the signs in conflict. However, this conceptual similarity should not be overstated as there are also differences between the signs. Moreover, the relevant consumer may not actually recognise both or either depiction as a hummingbird. In addition, the verbal element of the contested sign ‘MYPARFUMERIE’ conveys an additional and differing concept that, although weak, adds a further difference in the signs. Therefore, the signs are conceptually similar to only 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.

d) Distinctiveness of the earlier mark

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

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

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

e) 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).

The signs are visually similar to at most a very low degree and conceptually similar to only a low degree. An aural comparison is not possible.

The goods and services are partly similar and partly dissimilar. They target the general public and professionals, who will display an average degree of attention. The earlier mark has a normal degree of distinctiveness.

There is some similarity between the signs in that the signs contain a depiction of a bird that may be perceived as a hummingbird. However, a coincidence in a figurative element that has a decorative function in one of the signs cannot be, in itself, enough to find a likelihood of confusion. This is the case, otherwise, similarity would be found whenever two signs shared some devices, without taking into account the impact of this coincidence in the overall visual perception of the signs, or considering other factors such as the general composition of the signs, verbal elements, etc.

Apart from the differences in their depictions, the birds also play different roles within the signs. While the earlier mark is exclusively a depiction of a bird, in the contested sign the bird plays a secondary role as it has less impact than the verbal elements. Consumers will refer to the contested sign using its verbal elements (07/05/2015, T‑599/13, GELENKGOLD / FORM EINES TIGERS et al., EU:T:2015:262, § 53). They will not call the contested sign ‘that bird’ or ‘the hummingbird’, however, for the earlier mark, this is the only way to identify it.

Although it will not remain unnoticed by the relevant public, the depiction of the bird, placed in the upper-right corner of the contested sign in a small size, will not be considered as an indicator of a particular commercial origin, but will be perceived as a simple accessory to the verbal elements of the contested sign.

The minor visual and conceptual similarities between the signs are not sufficient to outweigh the differences between the signs in relation to similar services.

Considering all the above, there is no likelihood of confusion on the part of the English-speaking public in the European Union. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for whom the verbal elements of the contested sign will be meaningless and distinctive. This is because, as a result of the distinctive character of these elements, that part of the public will give even more importance to these elements as an indicator of commercial origin and will perceive the signs as even less similar.

COSTS

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

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca DRAGOSTIN

Meglena BENOVA

Biruté SATAITE-GONZALEZ

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.