OPPOSITION No B 2 940 818

Vorwerk International AG, Verenastrasse 39, 8832 Wollerau, Switzerland (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Homepage Industry Limited, Flat/Rm 10, 15/F Harry Ind Ctr, 49-51 Au Pui Wan Street, Fotan Nt, Hong Kong (applicant), represented by Maria Alicia Izquierdo Blanco, General Salazar 10, 48012 Bilbao, Spain (professional representative).

On 31/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 940 818 is partially upheld, namely for the following contested goods:

Class 21: Abrasive pads for kitchen purposes; baking mats; basting brushes; basting spoons [cooking utensils]; bottle openers, electric and non-electric; brush goods; cookery molds [moulds]; cookie [biscuit] cutters; cookie jars; cooking utensils, non-electric; coolers [ice pails]; corkscrews, electric and non-electric; crockery; cruet sets for oil and vinegar; crushers for kitchen use, non-electric; cutting boards for the kitchen; dishwashing brushes; drinking bottles for sports; egg separators, non-electric, for household purposes; garlic presses [kitchen utensils]; graters for kitchen use; grills [cooking utensils]; ice buckets; ice cream scoops; ice cube molds; ice cube molds [moulds]; ice cube moulds; ice pails; ice tongs; kitchen containers; kitchen grinders, non-electric; kitchen mitts; kitchen utensils; knife rests for the table; ladles for serving wine; mills for household purposes, hand-operated; mixing spoons [kitchen utensils]; molds [kitchen utensils]; mortars for kitchen use; moulds [kitchen utensils]; napkin rings; nutcrackers; oven mitts; pastry cutters; pepper mills, hand-operated; pipettes [wine-tasters]; pitchers; potholders; pouring spouts; salad tongs; salt shakers; scoops for household purposes; serving ladles; sieves [household utensils]; sifters [household utensils]; soap dispensers; sponge holders; sponges for household purposes; strainers for household purposes; sugar bowls; sugar tongs; table napkin holders; trays for household purposes; trays of paper, for household purposes; trivets [table utensils]; utensils for household purposes; whisks, non-electric, for household purposes.

2. European Union trade mark application No 16 529 001 is rejected for all the above goods. It may proceed for the remaining goods.

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 of European Union trade mark application No 16 529 001, . The opposition is based on European Union trade mark registration No 12 433 645, ‘Cookidoo’, and on international trade mark registration designating the European Union No 1 260 374, ‘COOK-KEY’. 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.

According to Article 10(1) EUTMDR (applicable to the present proceedings by virtue of Article 82(2)(d) EUTMDR), a request for proof of use of an earlier mark pursuant to Article 47(2) or (3) EUTMR is admissible if it is submitted as an unconditional request in a separate document within the period specified by the Office pursuant to Article 8(2) EUTMDR.

First of all, the applicant’s statement at the end of its observations of 27/02/2018, ‘We will make our complete observations regarding this matter when we receive the proof of use of the contrary party’, cannot be considered a sufficiently explicit and unambiguous request for proof of use. Moreover, 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.

Furthermore, even if the request had been filed as required by Article 10(1) EUTMDR, the earlier trade marks on which the opposition is based are not subject to the use obligation.

The date of filing of the contested trade mark is 29/03/2017.

Earlier EUTM No 12 433 645 was registered on 15/01/2015. Therefore, at the date of filing of the contested application it had been registered for less than five years. As regards earlier international registration No 1 260 374 designating the EU, Article 203 EUTMR provides that for the purposes of applying Article 47(2) EUTMR, the date of publication pursuant to Article 190(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark that is the subject of an international registration designating the EU must be put into genuine use in the European Union. The date of publication pursuant to Article 190(2) EUTMR for the earlier trade mark at issue is 15/06/2016. Therefore, it is also not subject to the proof of use obligation, and the request for proof of use would be inadmissible even if it had been filed in compliance with the requirements of 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.

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 European Union trade mark registration No 12 433 645 ‘Cookidoo’.

1. The goods and services

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

Class 7: Electric apparatus for household and industrial use in the field of nutrition and health, namely household knives, mills, grinders, fruit presses, blenders and whisks for household purposes; mechanical apparatus for making food and beverages, in particular for chopping, cutting, milling, crushing, grating, mixing, beating, stirring, emulsifying and kneading, electric kitchen machines; electric kitchen machines with integrated chopping, grinding and weighing functions; fittings for all the aforesaid goods; electric knives, bread cutting machines, electric can openers, aerated beverage-making machines.

Class 9: Recorded computer programs for operating electric household apparatus in the field of nutrition and health, computer programs (downloadable software) for internet platforms relating to the topics of cooking, household, nutrition and health, and for operating electric household apparatus in the field of nutrition and health, recorded computer software for operating electric household apparatus in the field of nutrition and health, downloadable computer software for internet platforms relating to the topics of cooking, household, nutrition and health, and for operating electric household apparatus in the field of nutrition and health; computer software for operating electric apparatus for household use in the field of nutrition and health; electronic publications, being downloadable and/or recorded on data carriers, relating to the topics of cooking, household, nutrition and health, and household apparatus; magnetic data carriers for use with electric household apparatus; recorded and unrecorded mechanical, magnetic, magneto-optical, optical and electronic carriers for sound and/or images and/or data, digital data carriers, compact discs, CD-ROMs, DVDs, all of the aforesaid being intended for use in or with electric household apparatus; USB sticks, dongles, UMTS sticks; All of the aforesaid being intended for use in or with electric household apparatus; modems for use in or with electric household apparatus, apparatus for recording, transmission or reproduction of sound or images for use in or with electric household apparatus; parts and fittings for all the aforesaid.

Class 11: Electric cooking utensils; electric containers for cooking, electric kitchen machines with integrated cooking functions, fittings for the aforesaid goods; electric microwave ovens; electric broilers; electric appliances for making yoghurt, electric machines for making ices, beverage cooling apparatus, bread baking machines, electric deep-fat fryers, toasters.

Class 16: Printed matter relating to the topics of cooking, household, nutrition and health, and household apparatus; printed publications relating to the topics of cooking, household, nutrition and health, and household apparatus; documents relating to the topics of cooking, household, nutrition and health, and household apparatus; instructional and teaching material (except apparatus) relating to the topics of cooking, household, nutrition and health, and household apparatus; periodicals, magazines, newspapers, newsletters, books, recipe books, cookery books, recipe cards, book jackets, all of the aforesaid relating to the topics of cooking, household, nutrition and health, and household apparatus; periodicals, manuals (handbooks), all of the aforesaid relating to the topics of cooking, household, nutrition and health, and household apparatus; catalogues relating to the topics of cooking, household, nutrition and health, and household apparatus; calendars relating to the topics of cooking, household, nutrition and health, and household apparatus; organisers and diaries relating to the topics of cooking, household, nutrition and health, and household apparatus; greeting cards relating to the topics of cooking, household, nutrition and health, and household apparatus; cards, posters, paintings, graphic prints, photographs, prints, pictures, all of the aforesaid relating to the topics of cooking, household, nutrition and health, and household apparatus; paper napkins, paper tablecloths, coasters made from cardboard or paper, paper place mats; plastic bags and paper bags; microwave cooking (bags for —).

Class 21: Household or kitchen utensils and containers; containers (not of precious metal or coated therewith) for cooking; accessories for the aforesaid goods included in class 21; non-electric ice cream makers, heat-insulated containers for beverages.

Class 35: Marketing, market research and market analysis; business management and organisation consultancy; arranging and concluding commercial transactions for others; arranging contracts for the buying and selling of goods; opinion polling; research services relating to advertising; distribution of products for advertising purposes; arranging of advertising; advertising, in particular radio, television, cinema, print, videotext and teletext advertising; advertising; publication of advertising literature; production of promotional films; rental of advertising films; production of advertising broadcasts and teleshopping programmes; telephone order placement for teleshopping; business management; business administration; office functions; advertising agencies; auctioneering, including on the internet; professional business and organisational consultancy for franchisees in connection with the setting up and management of commercial enterprises; publication of publicity texts; publication of printed matter for advertising purposes; merchandising (sales promotion); public relations; arranging and conducting of advertising events, exhibitions and trade fairs for commercial or advertising purposes; exhibitions for commercial or advertising purposes; marketing planning and organizational services; presentation of companies on the internet and other media; sponsoring in the form of advertising; advice for consumers; dissemination of advertisements; rental of sales stands, advertising space, advertising materials; providing of addresses; direct mail advertising and samples for advertising purposes; demonstration of goods for advertising purposes, and presentation of goods and services, bringing together, for others, of a variety of goods for presentation and sales purposes; online advertising on computer networks; presentation of goods on communication media, presentation of goods and services on online marketplaces; systemisation of information into computer databases, namely of evaluative feedback and ratings of sellers’ goods and services, the value and prices of sellers’ goods, services, delivery and the overall experience of buyers and sellers in connection therewith; conceptual design of customer loyalty measures for advertising and marketing purposes; retailing in relation to the aforesaid goods included in classes 7, 9, 11, 16 and 21, including via the internet; presentation of the aforesaid goods included in classes 7, 9, 11, 16 and 21, away from business premises by means of direct, personal contact between suppliers and customers, and arranging of contracts, for others, for the buying and selling of the aforesaid goods, arranging of contracts, for others, for the selling of goods via the internet; electronic commerce providers, namely order placement and delivery services and invoice management for electronic ordering systems.

Class 38: Telecommunications; providing access to computer programs on data networks, providing access to information on the internet, providing access to databases, providing access to computer software on data networks, providing access to non-downloadable software applications on data networks, providing platforms on the internet, providing portals on the internet, providing access to virtual spaces, internet platforms and/or social networks for the exchange of data and information; providing access to computer networks; forums [chat rooms] for social networking; providing online forums; providing telecommunication channels for teleshopping services; providing access to a searchable online evaluation database for buyers and sellers; electronic mail, electronic transmission of messages, information, images and text of all kinds; compilation and delivery of messages (press agencies), compilation and delivery of general information in the context of press agencies.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; training and further training consultancy; arranging and conducting of conferences, seminars and workshops (providing of training) for training and further training; organising, arranging and conducting of internships, in support of training; training (practical -) [demonstration]; arranging and conducting of colloquiums; training consultancy and further training consultancy; information events and presentations for cultural, sporting and teaching purposes; organisation and conducting of sporting and cultural events; organisation and conducting of shows, conferences, congresses and symposiums; organization of exhibitions for cultural or educational purposes; providing online electronic publications, not downloadable; desktop publishing (design of publications supported by computers); publication of texts (other than publicity texts); publication of books; publication of printed matter in electronic format, including on the internet; publication of periodicals and books in electronic form, including on the internet; on-line publication of electronic books and journals; videotape film production; publication of magazines; providing of online databases featuring instructions for recipes, recipe selection, food planning, menu planning and with cooking and baking instruction.

Class 42: Design and development of computer hardware and software, computer hardware and software consultancy, computer programming, electronic data processing consultancy, creation of programs for data processing, implementation of computer programs on networks, technical project management in the field of electronic data processing, server administration, electronic data security, electronic data storage, updating of computer software, installation of computer programs, duplication of computer programs, rental of computer software, maintenance of computer software, computer systems analysis, computer systems design, design, maintenance and updating of websites, for others, conversion of computer programs and data (not physical conversion), conversion of data or documents from physical electronic media; recovery of computer data.

Class 43: Information provided via an online database relating to recipes for meals and beverages, cooking and preparing of meals, cooking recipes and cooking tips.

Class 45: Dating services; personal and social services rendered by others to meet the needs of individuals; licensing of computer software.

The contested goods are the following:

Class 21: Abrasive pads for kitchen purposes; baking mats; basting brushes; basting spoons [cooking utensils]; bottle openers, electric and non-electric; brush goods; cookery molds [moulds]; cookie [biscuit] cutters; cookie jars; cooking utensils, non-electric; coolers [ice pails]; corkscrews, electric and non-electric; cosmetic spatulas; cosmetic utensils; crockery; cruet sets for oil and vinegar; crushers for kitchen use, non-electric; currycombs; cutting boards for the kitchen; dishwashing brushes; drinking bottles for sports; egg separators, non-electric, for household purposes; garlic presses [kitchen utensils]; graters for kitchen use; grills [cooking utensils]; ice buckets; ice cream scoops; ice cube molds; ice cube molds [moulds]; ice cube moulds; ice pails; ice tongs; kitchen containers; kitchen grinders, non-electric; kitchen mitts; kitchen utensils; knife rests for the table; ladles for serving wine; mills for household purposes, hand-operated; mixing spoons [kitchen utensils]; molds [kitchen utensils]; mortars for kitchen use; moulds [kitchen utensils]; napkin rings; nutcrackers; oven mitts; pastry cutters; pepper mills, hand-operated; pipettes [wine-tasters]; pitchers; potholders; pouring spouts; salad tongs; salt shakers; scoops for household purposes; serving ladles; sieves [household utensils]; sifters [household utensils]; soap dispensers; sponge holders; sponges for household purposes; strainers for household purposes; sugar bowls; sugar tongs; table napkin holders; trays for household purposes; trays of paper, for household purposes; trivets [table utensils]; utensils for household purposes; whisks, non-electric, for household purposes.

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

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

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

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

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

Contested goods in Class 21

Kitchen containers; kitchen utensils are identically contained in both lists of goods.

The contested utensils for household purposes are identically contained in the opponent’s list of goods although in a slightly different wording (as household utensils).

The contested abrasive pads for kitchen purposes; baking mats; basting brushes; basting spoons [cooking utensils]; bottle openers, electric and non-electric; brush goods; cookery molds [moulds]; cookie [biscuit] cutters; cookie jars; cooking utensils, non-electric; coolers [ice pails]; corkscrews, electric and non-electric; crockery; cruet sets for oil and vinegar; crushers for kitchen use, non-electric; cutting boards for the kitchen; dishwashing brushes; drinking bottles for sports; egg separators, non-electric, for household purposes; garlic presses [kitchen utensils]; graters for kitchen use; grills [cooking utensils]; ice buckets; ice cream scoops; ice cube molds; ice cube molds [moulds]; ice cube moulds; ice pails; ice tongs; kitchen grinders, non-electric; kitchen mitts; knife rests for the table; ladles for serving wine; mills for household purposes, hand-operated; mixing spoons [kitchen utensils]; molds [kitchen utensils]; mortars for kitchen use; moulds [kitchen utensils]; napkin rings; nutcrackers; oven mitts; pastry cutters; pepper mills, hand-operated; pipettes [wine-tasters]; pitchers; potholders; pouring spouts; salad tongs; salt shakers; scoops for household purposes; serving ladles; sieves [household utensils]; sifters [household utensils]; soap dispensers; sponge holders; sponges for household purposes; strainers for household purposes; sugar bowls; sugar tongs; table napkin holders; trays for household purposes; trays of paper, for household purposes; trivets [table utensils]; whisks, non-electric, for household purposes are included in the broad categories of the opponent’s household or kitchen utensils and containers. Therefore, they are identical.

The contested cosmetic spatulas; cosmetic utensils are intended for personal care and application of make-up and not for household use. The contested currycombs are combs used for rubbing down, grooming or cleaning a horse’s coat. The contested cosmetic spatulas; cosmetic utensils; currycombs have different natures and purposes from all the opponent’s goods in Class 21. They are neither complementary to nor in competition with the opponent’s goods in Class 21. It is unlikely that they will be produced by the same manufacturers, and they are generally distributed through different channels. The opponent’s remaining goods and services, in Classes 7, 9, 11, 16, 35, 38, 41, 42, 43 and 45, do not have any of the relevant criteria in common with the abovementioned contested goods either. They have different natures and purposes, are produced/provided by different manufacturers/providers, are distributed through different distribution channels, and are not complementary or in competition. Regarding the opponent’s services in Class 35 retailing in relation to the aforesaid goods included in classes 7, 9, 11, 16 and 21, including via the internet, apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail 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 services and the specific goods covered by the other mark are identical. Therefore, the contested cosmetic spatulas; cosmetic utensils; currycombs are dissimilar to all the opponent’s goods and services.

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 its observations, the applicant argues that the goods target professional consumers, since the goods are to be used in an industrial and/or technical field. The goods found to be identical to the opponent’s goods are goods in Class 21, generally used in a household or domestic setting. Although it cannot be excluded that the relevant goods may be also used by professionals, for example in the field of cooking or cleaning, they do not specifically target such a professional public, given the nature of the goods as described above. Furthermore, the majority of the relevant goods also bear an explicit specification that they are for household purposes. Therefore, contrary to the applicant’s claim, the Opposition Division considers that the goods found to be identical are directed at the public at large.

The degree of attention of the relevant public is considered average.

3. The signs

Cookidoo
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).

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 word ‘cook’ is meaningful in certain territories, for example in those countries where English is understood. The English-speaking part of the public is therefore likely to dissect this element in both marks and perceive it as a non-distinctive or weak element in relation to the relevant goods, as correctly pointed out by the applicant. However, this is not the case for the part of the public that does not understand English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Croatian-, Lithuanian- and Polish-speaking parts of the public, for which the signs under comparison are meaningless as a whole and without any distinguishable components.

The earlier trade mark is a one-word mark. According to settled case-law, the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the earlier word mark is depicted in lower or upper case letters. The word ‘Cookidoo’ has no meaning for the relevant part of the public and is of average distinctiveness.

The contested sign is a figurative mark that contains a stylised verbal element, ‘COOKDUO’, depicted in black upper case letters. The two letters ‘O’ are interconnected. The letter ‘K’ does not contain a vertical bar; however, in combination with the surrounding letters it will be perceived by the consumers as a letter ‘K’. Above the last letter ‘O’ appears an image of a leaf. Contrary to the applicant’s claim, the Opposition Division considers that the leaf above the letter ‘O’ is of a rather decorative nature and its distinctiveness is below average.

The verbal element ‘COOKDUO’ has no meaning for the relevant public and is of average distinctiveness.

Visually, the signs coincide in the letters ‘COOK*D*O’. However, they differ in the letter ‘I’ in the earlier mark, which appears between the letters ‘K’ and ‘D’ and has no counterpart in the contested sign, and in the second-last letter, which is ‘O’ in the earlier trade mark and ‘U’ in the contested sign. The signs also differ in the leaf above the last letter ‘O’ in the contested sign.

In word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30). In the present case, the first four letters are identical although the letter ‘K’ is stylised in the contested sign. Moreover, these first four coinciding letters form at least half of each sign, not just the beginning. Furthermore, the second halves of the signs also coincide in the presence of the letters ‘D’ and ‘O’, and the differing letters ‘U’ in the earlier mark and ‘O’ in the contested sign are visually slightly similar.

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

Aurally, the pronunciation of the signs coincides in the sound of the first four letters, ‛COOK’, in the sound of the last letter ‘O’ and in the sound of the letter ‘D’, present identically in both signs. The pronunciation differs in the sound of the letter ‘I’ in the earlier mark, which has no counterpart in the contested sign, and in the sound of the second-last letter, which is ‘O’ in the earlier mark and ‘U’ in the contested sign. However, the differing sounds of two letters in the signs do not outweigh the identical sounds of the first four letters constituting the first half of each sign and the coinciding sounds of the letters ‘D’ and ‘O’ in the second halves of the signs.

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

Conceptually, although the signs as a whole do not have any meaning for the relevant part of the public, the figurative element above the letter ‘O’ in the contested sign will be perceived as a leaf. Therefore, the signs are conceptually not similar. However, the relevance of the lack of conceptual similarity between the marks is low because the only element in the signs that conveys a concept is a decorative element and its distinctiveness is below average.

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 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 the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, 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 are partly identical and partly dissimilar. They target the general public, which will display an average degree of attention. The signs are visually and aurally similar to an average degree. Conceptually the signs are not similar. Although the signs as a whole do not convey concepts, they were found conceptually not similar due to the presence of the figurative element above the letter ‘O’ in the contested sign. However, this element, namely the leaf, is of a decorative nature and its distinctiveness is below average. Therefore, this aspect is of little relevance in the overall assessment of the similarity of the marks.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In the present case, when encountering the signs consumers will perceive the first four letters ‘COOK’ in both of them. Furthermore, the remaining four letters in the earlier mark and three letters in the contested sign also include the letters ‘D’ and ‘O’. Although there is a difference in two letters between the signs, this difference appears in the second half of each sign.

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). Taking into account that the differing letters appear between the coinciding letters and applying the abovementioned principle of imperfect recollection, it is likely that these differences may go unnoticed by the consumers.

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/services covered are from the same or economically linked undertakings. Taking into account that the contested sign is a figurative mark depicted in stylised letters and contains a decorative figurative element above the last letter, it is not possible to exclude the possibility that consumers will perceive the contested sign as a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Finally, account is also taken of the fact that some of the contested goods are identical to the opponent’s goods. Therefore, applying the abovementioned principle of interdependence, the average degree of similarity between the signs is reinforced by the identity between the goods.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘COOK’. In support of its argument, the applicant refers to several European Union trade mark registrations, international trade mark registrations designating various countries including Croatia, Lithuania and Poland and national trade mark registrations including Polish trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element in question. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Croatian-, Lithuanian- and Polish-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 433 645.

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

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on earlier international trade mark registration No 1 260 374 designating the European Union for the word mark ‘COOK-KEY’.

Since this mark covers the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Zuzanna STOJKOWICZ

Birute SATAITE-GONZALEZ

Ferenc GAZDA

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.