OPPOSITION No B 3 042 994

KS Warenhaus IPCo GmbH, Maximiliansplatz 12, 80333 München, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

AD Auto Total S.R.L., Str. Tincani nr. 8, bl. Z18, sc. A, et. 10, ap. 66, sector 6, 061596

Bucharest, Romania (applicant), represented by Marilena Comanescu, 4 Piata Dorobanti, B Entrance, 2nd floor, Ap. 8, Sector 1, 010588 Bucharest, Romania (professional representative).

On 23/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 042 994 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 454 901 (figurative mark). The opposition is based on the following earlier trade marks:

1. European Union trade mark registration No 12 608 428 ‘KARSTADT’ (word mark),

2. European Union trade mark registration No 2 038 347 ‘KARSTADT’ (word mark),

3. German trade mark registration No 30 604 252 ‘KARSTADT’ (word mark).

The opponent invoked Article 8(1)(b) EUTMR for the earlier mark 1 and Article 8(5) EUTMR for the earlier marks 2 and 3.

ADMISSIBILITY

The applicant argues that the opposition is inadmissible because it was submitted late. It claims that the opposition period for the contested application expired on 17/02/2018 but the opponent submitted its opposition only on 19/02/2018.

However, 17/02/2018 was a Saturday, i.e. a day on which the Office was not open for receipt of documents. This means that in accordance with Article 69(1) EUTMDR, the opposition period expired on Monday 19/02/2018 (the first day thereafter on which the Office was open for receipt of documents). Consequently, the opposition notice was submitted on time and is admissible.

The assessment of the opposition will now start with the earlier mark 1 for which proof of use has not been requested, unlike for the other two earlier trade marks.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR – EARLIER MARK 1

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

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

Class 7: Electric blenders; juice extractors; electric can openers; vacuum cleaners; floor polishers.

Class 9: Electric household and bathroom scales, electric cables; hair dryers, amplifiers; antennas; cabinets for loudspeakers; apparatus for recording, transmission or reproduction of sound or images; telephones, in particular mobile phones; magnetic data carriers, CDs, DVDs, data carriers of all kinds containing information and/or sound and/or images.

Class 11: Electric coffee filters; toasters; bread toasters; electric coffee machines; electric coffee perculators; hair dryers.

Class 18: Leather and imitations of leather, and goods made of these materials included in class 18, namely bags and small leather goods, purses, pocket wallets, key wallets; trunks and travelling bags; umbrellas, sun umbrellas, parasols.

Class 20: Furniture; mattresses, bedding (except bed linen), chair pads, mirrors, picture frames; wickerwork.

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); articles for cleaning purposes; steel wool; glassware, porcelain and earthenware included in class 21; blenders for food (non-electric); non-electric coffee perculators.

Class 24: Textile goods included in class 24, namely bed and table linen; bed and table covers, towels, blankets.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 7: Radiators for vehicles; heat sinks for use in machines; oil coolers for motors; radiators [cooling] for motors and engines; expansion tanks [parts of vehicle cooling radiators]; radiator caps for cooling radiators of engines.

Class 11: Radiant heaters; convectors [radiators]; sectional radiators; space heaters for vehicles; valves as part of radiators; radiator caps; gas space heaters; ventilating apparatus for vehicles; heating, ventilating, and air conditioning and purification equipment (ambient); vehicle HVAC systems (heating, ventilation and air conditioning); air inlets [vents] for vehicles; air conditioners for vehicles.

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

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

However, the term ‘namely’, used in the opponent’s list of goods 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 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. Consequently, the opponent’s argument emphasising that the earlier trade mark covers goods in Classes 7, 9 and 11 and the contested goods are in Classes 7 and 11 is not persuasive of their similarity.

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 (‘Canon’ criteria).

The contested goods in Class 7 are radiators and other heating or cooling devices, and parts thereof, for use in vehicles, machines, motors and engines. The list of goods in Class 11 of the contested application covers various heating, ventilating or air conditioning apparatus, and parts thereof, either for general use or for use in vehicles.

On the other hand, the opponent’s list of goods includes a wide range of goods covering, in essence, household and kitchen appliances, utensils or containers (in Classes 7, 9, 11 and 21), apparatus for recording, transmission or reproduction of sound or images and related goods, telephones, data carriers (in Class 9), leather and imitations of leather, bags, purses, wallets, umbrellas, parasols (Class 18), furniture, mattresses and other related goods for the interiors (Class 20), bed and table linen and covers, towels, blankets (Class 24) and clothing, footwear, headgear (Class 25).

The contested goods are dissimilar to all the opponent’s goods in Classes 7, 9, 11, 18, 20, 21, 24 and 25 as they do not have any relevant points of contact that could justify finding a level of similarity between them. They have a clearly different nature, purpose and method of use. They are neither in competition nor clearly complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.

The opponent’s argument that some of the goods compared have a technical nature and are, therefore, similar is not persuasive. Being ‘technical’ is a very vague characteristic which is not sufficient to make any goods similar under the ‘Canon’ criteria of similarity mentioned above. For example, the opponent’s electric coffee machines in Class 11 and the contested radiant heaters in Class 11 are both ‘technical’ but their specific nature is quite different and neither the other criteria of similarity are met. Consequently, the opponent’s argument must be rejected.

b) Conclusion

According to Article 8(1)(b) EUTMR, the identity or similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition based on the earlier mark 1 and on the ground of Article 8(1)(b) EUTM must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark, the arguments and evidence submitted by the opponent in this respect do not alter the outcome reached above.

The assessment of the opposition will now continue with the proof of use of the earlier marks 2 and 3.

PROOF OF USE

First, it is necessary to deal with the opponent’s argument that the applicant’s request for proof of use is inadmissible because it was not filed in a separate document as required by Article 10(1) EUTMDR.

Nevertheless, according to the contents of the opposition file, the applicant indeed requested the proof of use in a separate document on 07/11/2018. On the same date, it also filed another document with observations where the proof of use request was repeated. All the applicant’s submissions, including the separate request for proof of use, were forwarded by the Office to the opponent on 21/11/2018. Consequently, the request for proof of use was filed in a separate document and is, therefore, admissible.

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 requested that the opponent submit proof of use of the earlier trade marks 2 and 3.

The date of filing of the contested application is 10/11/2017. The opponent was therefore required to prove that the earlier trade marks 2 and 3 were put to genuine use in the European Union and Germany, respectively, from 10/11/2012 to 09/11/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

Earlier mark 2

Class 16: Printed matter.

Class 35: Advertising; business management; business administration; office functions; business management support services in the field of the sale of goods and sales promotion, demonstration of goods, distribution of goods for advertising purposes; services in the field of commerce, namely the arranging of contracts for the buying and selling of goods and services, including via the Internet; department store and warehouse services; mail order services and the sale of goods and services by means of e-commerce on the Internet.

Class 36: Insurance; financial affairs; monetary affairs.

Class 38: Telecommunications, namely the transmission of information (speech, texts, data or images) on networks, in particular on the Internet/an Intranet.

Class 39: Transport and delivery of goods; storage of goods.

Class 41: Publishing printed matter.

Earlier mark 3

Class 35: Retail services also via the internet relating to goods of classes 3, 5, 8, 9, 11, 12, 14, 16, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 21/11/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 26/01/2019 to submit evidence of use of the earlier trade marks. On 26/03/2019, within the extended time limit, the opponent referred to the documents filed previously as evidence of reputation and also submitted additional evidence of use.

The evidence to be taken into account is the following:

Documents filed as evidence of reputation on 04/09/2018

 Annex 1: Print-out of the article ‘Rudolph-Karstadt-Museum eröfnet’ from the online newspaper ‘Ostsee Zeitung’ dated 17/05/2016, referring to the 135^th anniversary of the Karstadt stores.

 Annex 2: Overview from www.statista.com showing the number of Karstadt department stores in Germany (between 91 in 2006/07 and 79 in 2016/17).

 Annex 3: Print-out of the initial page of the on-line shop at www.karstadt.de showing the Karstadt trade mark, dated 02/09/2018.

 Annex 4: Further print-outs from the on-line shop at www.karstadt.de, dated 02/09/2018.

 Annex 5: Article from the on-line newspaper “Abendzeitung“, dated 10/03/2016, showing a photograph of the Karstadt department store in Munich.

 Annex 6: Overview from www.statista.com showing the yearly turnover of Karstadt Warenhaus GmbH (between 7,58 billion euro in 2000 and 2,19 billion euro in 2016/17).

 Annex 7: Excerpt from the annual report of Karstadt Warenhaus GmbH for the business year from 01/10/2016 to 30/09/2017 (pages 1 and 5 of report) showing the turnover of 1,927 billion euro in retail sale.

 Annex 8: Excerpt from the annual report of Karstadt Warenhaus GmbH for the business year from 01/10/2014 to 30/09/2015 showing the turnover of 2,091 billion euro in 2014/15 and 2,24 billion euro in 2013/14, both in retail sale.

 Annex 9: Overview from www.statista.com titled ‘Number of customers of the most popular department stores (purchase in the last six months) in Germany from 2014 to 2017 (in millions)’, showing Karstadt on the second place with 16,62 – 17,35 million customers per year.

 Annex 10: Overview from www.statista.com titled ‘Ranking of the most popular department stores (purchase in the last six months) in Germany from 2014 to 2017’ showing Karstadt on the second place with 24,6%.

 Annex 11: Print-out from www.karstadt.de showing the Karstadt customer card.

 Annex 12: Internal chart with an overview of the number of plastic bags provided to Karstadt stores from 2009 to 2017 (between 93 million in 2009 and 9,5 million in 2017).

 Annex 13: Affidavit of Ms. Jessica Deyle, buyer for packaging materials at Karstadt Warenhaus GmbH, dated 03/09/2018, confirming the above numbers of the ‘Karstadt’ plastic bags provided to Karstadt stores from 2009 to 2017.

 Annex 14: Two photographs of a plastic bag bearing the trade mark ‘KARSTADT’.

 Annex 15: Affidavit of Ms. Walburga Wolff, Head of Marketing Department of Karstadt Warenhaus GmbH, dated 30/08/2018. It mentions the number of Karstadt advertising brochures circulated weekly in Germany from 2011 to 2017 (235 - 281 million brochures per year)

 Annex 16: Two front pages of the marketing brochures dating from 2012 showing the ‘KARSTADT’ trade mark and different offers of the Karstadt stores.

 Annex 17: Two cover pages of the marketing brochures dating from 2013 showing the ‘KARSTADT’ trade mark and different offers of the Karstadt stores.

 Annex 18: Two cover pages of the marketing brochures dating from 2014 showing the ‘KARSTADT’ trade mark and different offers of the Karstadt stores.

 Annex 19: Three cover pages of the marketing brochures dating from 2015 showing the ‘KARSTADT’ trade mark and different offers of the Karstadt stores.

 Annex 20: Three cover pages of the marketing brochures dating from 2016 showing the ‘KARSTADT’ trade mark and different offers of the Karstadt stores.

 Annex 21: ‘KARSTADT’ catalogue from October 2016 showing a wide variety of consumer goods.

 Annex 22: Excerpt of the brochure from October 2016 (pages 1, 19 and 35) showing the ‘KARSTADT’ trade mark and various offers of Karstadt stores.

 Annex 23: Excerpt of another brochure from October 2016 (pages 1, 15, 17 and last page) showing the ‘KARSTADT’ trade mark and various offers of Karstadt stores.

 Annex 24: Two slides from an internal presentation regarding marketing measures showing use of trade mark ‘KARSTADT’ on the exterior and in the interior of the department store building, dated 2015.

 Annex 25: Excerpts of a market survey by Innofact AG concerning the knowledge of ‘KARSTADT’ in August 2018. Karstadt is on the second place in unaided knowledge (with 47,2%) and on the fifth place in aided knowledge (with 95,2%).

Documents filed as evidence of use on 26/03/2019

 Annex 26: Print-outs from www.karstadt.de, dated 21/03/2019, showing the photographs and addresses of a large number of Karstadt department stores in various German cities.

 Annex 27: Internal document with a list of Karstadt stores as of February 2019 (81 stores).

 Annex 28: Excerpts from the marketing brochure from January 2017 showing the ‘KARSTADT’ trade mark and different offers of the Karstadt stores.

 Annex 29: Excerpts from another marketing brochure from January 2017 showing the ‘KARSTADT’ trade mark and different offers of the Karstadt stores.

 Annex 30: Excerpts from the marketing brochure from March 2017 showing the ‘KARSTADT’ trade mark and different offers of the Karstadt stores.

 Annex 31: Excerpts from the marketing brochure of April 2017 showing the ‘KARSTADT’ trade mark and the Easter offers of Karstadt stores.

Earlier mark 3

The earlier mark 3 has been registered for retail services also via the internet relating to goods of classes 3, 5, 8, 9, 11, 12, 14, 16, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34 in Class 35. This list of services deserves a closer examination.

In the case R 1672/2015-2 concerning retail services relating to goods identified only by class numbers, the Boards of Appeal considered in paragraph 32 that ‘…it is not possible, from the list of services in Class 35 of the earlier German trade mark No 302 009 061 711 alone, to know for which goods the retail services are designated by the mark, since those goods are not identified specifically, but only by reference to their classes. Since the classes of the Nice Agreement often cover a large number of very different goods, such information is not sufficient in order to identify the retail services specifically covered (to that effect and by analogy, 20/03/2013, T-571/11, Club Gourmet, EU:T:2013:145, § 24 and the case-law cited therein, confirmed in 06/02/2014, C-301/13 P, Club Gourmet, EU:C:2014:235)’.

In paragraph 33, the Boards added that ‘therefore, as the EUTMR requires that the goods and services for which the protection of the trade mark is sought be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought and due to the fact that the opponent’s indications ‘retail services … with goods of Classes … 2 to 8’ and ‘retail services … with goods of Classes … 10 to 14’ do not comply with that requirement, the Board finds that it is not possible to make any comparison between the respective specifications based on these terms’.

The above considerations are applicable by analogy in the present case because in the context of proof of use, the Opposition Division must assess whether the earlier trade mark was used for the goods and services in respect of which it is registered and on which the opposition is based.

In accordance with the first sentence of Article 47(2) EUTMR, the earlier registered mark must have been put to genuine use in connection with the goods or services in respect of which it is registered and which the opponent cites as justification for its opposition. The third sentence of Article 47(2) EUTMR stipulates that if the earlier trade mark has been used for part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered for only that part of the goods or services.

Consequently, the Opposition Division must first clearly know for which goods and services the earlier trade mark is registered in order to assess whether the evidence submitted by the opponent shows use for all, part or none of the registered goods and services.

However, in the present case the goods covered by the opponent’s retail services are not identified explicitly but only by the class numbers. This means that it is not clear for which retail services the earlier mark 3 is actually registered and thus it is not possible to assess for which of these services the mark was used according to the evidence filed.

As it is not possible to assess for which registered services the earlier trade mark 3 was used, and given that genuine use cannot be proved by means of probabilities and suppositions, it is concluded that the opponent failed to prove genuine use for this earlier trade mark.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR insofar as it is based on earlier mark 3.

Earlier mark 2

The annexes 2, 5, 6, 9, 10, 16-23 and 27-31 show that the place of use is throughout Germany (which represents a substantial part of the territory of the European Union). This can be inferred from the language of the documents (German), the currency mentioned (euro), the names of various cities in Germany and the use of the ccTLD ‘.de’. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents filed, namely annexes 1, 2, 6-10, 12-23 and 28-31, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the mark has been used in accordance with its function and in the form as registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark 2 during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark only for the following services:

Class 35: Department store services.

In this context it is appropriate to note that a department store is defined as ‘a large shop stocking many varieties of goods in different departments’ (see Oxford English Dictionary at www.lexico.com) or a ‘retail establishment that sells a wide variety of goods. These usually include ready-to-wear apparel and accessories for adults and children, yard goods and household textiles, small household wares, furniture, electrical appliances and accessories, and, often, food….’ (see Encyclopaedia Britannica). Consequently, it is considered that the specification of services is sufficiently clear.

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark 2 has a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 10/11/2017. Therefore, the opponent was required to prove that the earlier trade mark 2 had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent proved genuine use, namely department store services in Class 35.

The opposition is directed against the following goods:

Class 7: Radiators for vehicles; heat sinks for use in machines; oil coolers for motors; radiators [cooling] for motors and engines; expansion tanks [parts of vehicle cooling radiators]; radiator caps for cooling radiators of engines.

Class 11: Radiant heaters; convectors [radiators]; sectional radiators; space heaters for vehicles; valves as part of radiators; radiator caps; gas space heaters; ventilating apparatus for vehicles; heating, ventilating, and air conditioning and purification equipment (ambient); vehicle HVAC systems (heating, ventilation and air conditioning); air inlets [vents] for vehicles; air conditioners for vehicles.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 04/09/2018 the opponent submitted evidence to prove reputation (annexes 1-25 summarised above).

It is clear from the evidence that the earlier trade mark 2 has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The turnover figures, the number of customers, the ranking of department stores, the number of stores throughout Germany or the circulation figures of the advertising brochures shown by the evidence all unequivocally show that the mark enjoys reputation among the relevant public for department store services in Class 35. This is corroborated by the market survey (annex 25) proving a good knowledge of the mark among the public some ten months after the relevant date (given that reputation for brick-and-mortar department stores is normally build over many years and is not a question of months).

b) The signs

KARSTADT
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 element ‘KARSTADT’ of which the earlier mark is composed has no meaning for most of the relevant public in the EU and is, therefore, distinctive for them. Only the German-speaking consumers will recognize the sequence of letters ‘STADT’ in the earlier mark as the German word for ‘city, town’. However, as the element ‘KARSTADT’ as whole has no clear meaning in relation to the relevant services, it is distinctive also for the German-speaking consumers.

As for the contested sign, the element ‘Kaltstadt’ has no meaning for most of the relevant public in the EU and is, therefore, distinctive for them. For the German speakers, the sequence of letters ‘Kalt’ means ‘cold’ and ‘stadt’ has the same meaning as described above. Although the sequence of letters ‘Kalt’ is weak to a greater or lesser extent for all the contested goods in Classes 7 and 11, which are in essence heating, cooling, air-conditioning or ventilating apparatus, the element ‘Kaltstadt’ as a whole has no meaning in relation to those goods and is, therefore, distinctive for the German-speaking consumers as well.

The fact that the earlier trade mark is depicted in upper case and the verbal element of the contested sign in relatively common title case has no bearing on the comparison of the marks, because the earlier mark is a word mark. Protection is therefore granted for the word itself, and not for the particular way in which the mark is written.

The large blue and white figurative element of the contested sign is relatively elaborate and is, therefore, normally distinctive. It is also the dominant element of the sign as it is the most eye-catching.

Nevertheless, 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 reduces the impact of the dominant figurative element and enhances the impact of the verbal element ‘Kaltstadt’ of the contested sign.

Visually, the signs coincide in ‘KA**STADT’. However, they differ in ‘-R-’ vs. ‘-LT-’ and in the additional figurative element of the contested sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘KA**STADT’, present identically in both signs. The pronunciation differs in the sound of the letters ‘-R-’ vs. ‘-LT-’.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for most of the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public. As for the German speakers, both marks will be associated with the notion of a ‘city, town’. Consequently, the marks are conceptually similar to an average degree for this part of the public.

In view of the above findings, the marks as a whole are considered similar to an average degree.

On several occasions, the opponent argues that both marks are used in the same colour combination of blue and white. However, whereas the colours blue and white are present in the contested sign, the earlier mark is a mere verbal mark with no particular colours. The comparison of signs must therefore be based on the earlier mark as registered and not on the way the mark is actually used. Consequently, the opponent’s argument cannot make the marks any more similar.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, the marks are similar to an average degree. The earlier trade mark enjoys a normal degree of reputation (in other words, it has not been proven that it enjoys an exceptional or a high degree of reputation).

As to the goods and services at stake, the earlier mark is reputed for department store services in Class 35. On the other hand, the contested goods in Class 7 are radiators and other heating or cooling devices, and parts thereof, for use in vehicles, machines, motors and engines. The list of goods in Class 11 of the contested application covers various heating, ventilating or air-conditioning apparatus, and parts thereof, either for general use of for use in vehicles. This means that the contested goods can be roughly divided into two categories: the first one covering specialised goods directed at the manufacturers of vehicles and machinery and other professional customers (e.g. repair shops) and the second one covering goods which are, or potentially can be, consumer goods directed at the general public. The categories are as follows:

Specialised goods:

Class 7: Radiators for vehicles; heat sinks for use in machines; oil coolers for motors; radiators [cooling] for motors and engines; expansion tanks [parts of vehicle cooling radiators]; radiator caps for cooling radiators of engines.

Class 11: Valves as part of radiators; radiator caps; vehicle HVAC systems (heating, ventilation and air conditioning); air inlets [vents] for vehicles; air conditioners for vehicles.

Consumer goods:

Class 11: Radiant heaters; convectors [radiators]; sectional radiators; space heaters for vehicles; gas space heaters; ventilating apparatus for vehicles; heating, ventilating, and air conditioning and purification equipment (ambient).

It is considered that the specialised goods in Classes 7 and 11 are so different from the opponent’s department store services that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. These goods and services have absolutely nothing in common. The opponent’s services consist in selling a wide variety of common consumer goods to the general public, normally in a big building located in the centre of large towns or cities. The specialised goods in Classes 7 and 11 are very specific heating, cooling or air conditioning devices, and parts thereof, which are exclusively for use in vehicles, machines, motors or engines and which are sold only to professionals (manufacturers, repair shops etc.) through particular distribution channels. These specialised goods will not be sold in the opponent’s department stores which sell only common consumer goods. These goods and services are indeed very far removed from each other.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them in relation to the above-mentioned specialised goods in Classes 7 and 11. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected insofar as these goods are concerned.

The situation is however different in relation to the consumer goods in Class 11. They target the general public and can be sold in the opponent’s department stores. This being said, the nature of those goods and services is still quite different (selling a wide variety of consumer goods in a department store vs. technological devices used for heating, cooling or air conditioning) which means that the goods and services have very different commercial and technical characteristics. Furthermore, the consumer goods in Class 11 do not count among the most common products typically sold in a department store (such as clothing, shoes, handbags, perfumery, cosmetics etc.).

All in all, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark in relation with the consumer goods in Class 11, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. Nevertheless, for the reasons mentioned above, this link is weak.

Although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that the applicant’s sign seeks to participate in the goodwill associated with the earlier trade mark without paying any financial compensation and without making own efforts to build up its own trade mark. Furthermore, the opponent argues that the distinctive character of ‘KARSTADT’ will be diminished and potentially destroyed.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

It should be recalled that there is only a weak link between the marks when it comes to the relevant contested goods in Class 11. Furthermore, the commercial and technical characteristics of the goods/services and the relevant segments of trade are totally different. Consequently, it is unlikely that the image of the earlier mark ‘KARSTADT’ reputed for department store services could be transferred to technological devices used for heating, cooling or air conditioning (i.e. the relevant contested goods in Class 11). The marketing of those contested goods will not be made easier by their association with the earlier mark with a reputation because there is no special connection between the goods and the services. It has not been proven what kind of benefit could for example a radiator draw from a reputed chain of department stores.

On the basis of the above, the Opposition Division concludes that there are no indications suggesting that the use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Detriment to the distinctive character (dilution)

Detriment to the distinctive character of the earlier mark (also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’) is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to ‘dispersion’ of the identity of the earlier mark (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 29).

According to the Court of Justice of the European Union, ‘… the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect’ (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 35).

The Court held in the judgment of 27/11/2008, C-252/07, Intel, EU:C:2008:655 that Article 4(4)(a) TMD (the equivalent to Article 8(5) EUTMR) must be interpreted as meaning that proof that the use of the later mark would be detrimental to the distinctive character of the earlier mark requires evidence of a ‘change in the economic behaviour’ of the average consumer of the goods/services for which the earlier mark was registered, or a serious likelihood that such a change will occur in the future.

The Court has further elaborated on the concept of ‘change in the economic behaviour of the average consumers’ in its judgment of 14/11/2013, C-383/12 P, Répresentation d’une tête de loup, EU:C:2013:741. It indicated that it is an autonomous objective condition that cannot be deduced solely from subjective elements such as how consumers perceive the dispersion of the reputed mark’s image and identity. The mere fact that consumers note the presence of a new similar sign that is likely to undermine the earlier mark’s ability to identify the goods for which it is registered as coming from mark’s proprietor, is not sufficient by itself to establish the existence of a detriment or a risk of detriment to the distinctive character of the reputed mark (paras 35 to 40).

In the present case, the opponent only very briefly argued that the distinctive character of ‘KARSTADT’ would be diminished and potentially destroyed, without however adducing any specific evidence or arguments about the ‘change in the economic behaviour of the average consumers’.

On the basis of the above, the Opposition Division concludes that there are no indications suggesting that the use of the contested trade mark would be detrimental to the distinctive character of the earlier trade mark.

As seen above, it has not been established that use of the contested trade mark for the relevant consumer goods in Class 11 would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark, as required by Article 8(5) EUTMR. As one of the necessary requirements is not met, the opposition must be rejected as not well founded under Article 8(5) EUTMR in relation to these contested 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.

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

Vita VORONECKAITĖ

Vít MAHELKA

Cindy BAREL

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.