OPPOSITION No B 3 068 157

Xiamen Maicheng Internet Technology Co. Ltd., Room No.2, Unit A, 3rd Block, 8th Floor, Building D, Xiamen International Shipping Center, Xiangyu Road No. 97, Free Trade Zone, Xiamen City, Fujian Province, People´s Republic of China (opponent), represented by The Trade Marks Bureau, 3rd Floor, 14 Hanover Street, Hanover Square, W1S 1YH, London, United Kingdom (professional representative)

a g a i n s t

Wenzhou Juli Internet Technology Co. Ltd., Rm.1001-1 Henglong Business Build., Chezhan Rd., Lucheng Dist., Wenzhou, People´s Republic of China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 05/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 068 157 is partially upheld, namely for the following contested goods:

Class 6: Towel dispensers, fixed, of metal; Towel dispensers of metal.

Class 21: All the goods applied for in this Class.

2. European Union trade mark application No 17 892 721 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 892 721 for the word mark ´GRICOL`, namely against all the goods in Classes 6, 9 and 21. The opposition is based on European Union trade mark registration No 17 885 157 for the word mark ´Gricol`. The opponent invoked Article 8(1)(a) and (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.

1. The goods

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

Class 21: Utensils for household purposes; containers for household or kitchen use; cups; tableware, other than knives, forks and spoons; baskets for household purposes; trays for household purposes; kitchen containers; daily use glassware including cups, plates, pots, crocks; drinking vessels; boxes for dispensing paper towels; soap boxes; toilet paper dispensers; soap dispensers; drying racks for laundry; soap holders; dishes for soap; towel rails and rings; rails and rings for towels; toilet paper holders; waste paper baskets; toilet brushes; toothbrushes; cases for toothbrushes; toothbrush boxes; cosmetic utensils; brooms; cloths, sponges, pads for cleaning glass for doors and windows.21Utensils for household purposes; containers for household or kitchen use; cups; tableware, other than knives, forks and spoons; baskets for household purposes; trays for household purposes; kitchen containers; daily use glassware including cups, plates, pots, crocks; drinking vessels; boxes for dispensing paper towels; soap boxes; toilet paper dispensers; soap dispensers; drying racks for laundry; soap holders; dishes for soap; towel rails and rings; rails and rings for towels; toilet paper holders; waste paper baskets; toilet brushes; toothbrushes; cases for toothbrushes; toothbrush boxes; cosmetic utensils; brooms; cloths, sponges, pads for cleaning glass for doors and windows. 21Utensils for household purposes; containers for household or kitchen use; cups; tableware, other than knives, forks and spoons; baskets for household purposes; trays for household purposes; kitchen containers; daily use glassware including cups, plates, pots, crocks; drinking vessels; boxes for dispensing paper towels; soap boxes; toilet paper dispensers; soap dispensers; drying racks for laundry; soap holders; dishes for soap; towel rails and rings; rails and rings for towels; toilet paper holders; waste paper baskets; toilet brushes; toothbrushes; cases for toothbrushes; toothbrush boxes; cosmetic utensils; brooms; cloths, sponges, pads for cleaning glass for doors and windows.

The contested goods are the following:

Class 6: Screw rings of metal; Towel dispensers, fixed, of metal; Fittings of metal for furniture; Hardware of metal, small; Bells; Towel dispensers of metal; Signboards of metal; Metal garment hooks; Locks of metal, other than electric; Safes [strong boxes]; Tanks of metal; Nozzles of metal; Wire of common metal; Works of art of common metal; Hooks [metal hardware].

Class 9: Sockets, plugs and other contacts [electric connections]; Electronic locks; Electric door bells; Videophones; Currency counting machines; Electric sockets; Blank integrated circuit cards [blank smart cards]; Calculators; Tripods for cameras; Switches, electric; Biometric fingerprint door locks; Time clocks [time recording devices]; Locks, electric; Eyeglasses; Sunglasses; Theft prevention installations, electric.

Class 21: Toilets ustensils; Refuse bins; Towel rails and rings; Toilet paper holders; kitchen ustensils; Clothes drying racks; Porcelain ware; Cosmetic ustensils; Combs; Drinking vessels; Cleaning instruments, hand-operated; Containers for household or kitchen use; Dishware; Boxes for dispensing paper towels for household use; Dishes for soap.

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.

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.

Contested goods in Class 6

The contested towel dispensers, fixed, of metal and towel dispensers of metal are highly similar to the opponent´s boxes for dispensing paper towels in Class 21. Despite the applicant’s arguments in this regard, these goods have the same purpose, namely containing towels to be dispensed, and often coincide in their methods of use. They target the same public, and their producers can be the same. Furthermore, they are in competition.

The remaining contested goods in this class encompass items of metal hardware (ironmongery), works of art of common metal and structures, and containers of metal, namely safes [strong boxes] and tanks of metal which have specific purposes, for example for the burglar-proof and fireproof storage and protection. They have different natures, purposes and methods of use than the opponent´s goods in Class 21 which are essentially household, kitchen, toilet and cosmetic utensils and containers, and dish- and tableware. These sets of goods belong to different market sectors which do not intersect with each other. Different know-how is needed in the production and use of the goods in question. They are not produced by the same undertakings and are usually distributed through different sales channels. Their relevant publics are also different. They are neither in competition nor complementary. Therefore, they are dissimilar.

Contested goods in Class 9

The contested goods in Class 9 encompass, on the one hand, electric and electronic apparatus, instruments and equipment, and, on the other hand, eyewear. These goods have no point of contact with the opponent's goods in Class 21. The fact that, as the opponent brought forward, these goods are all used or installed in households, is not sufficient to conclude to similarity. They have different purposes, distribution channels, sales outlets and providers, as well as method of use. They are neither in competition nor complementary to each other. Therefore, these goods and services are dissimilar.

Contested goods in Class 21

All of the contested goods in Class 21 are identical to the opponent’s utensils for household purposes; containers for household or kitchen use; tableware, other than knives, forks and spoons; drinking vessels; boxes for dispensing paper towels; drying racks for laundry; dishes for soap; towel rails and rings; toilet paper holders; waste paper baskets; toilet brushes; cosmetic utensils; brooms in Class 21, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods are included in, or overlap with, the contested goods.

2. The signs

Gricol	GRICOL
Earlier trade mark	Contested sign

The signs are identical.

This outcome is not affected by the fact that the earlier mark is in title-case whereas the contested sign is in upper-case letters, as the protection which results from the registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (29/03/2012, T‑369/10, Beatle, EU:T:2012:177, § 42).

3. Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods. Furthermore, some contested goods, as established above in section a) of this decision, were found to be highly similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods. The rest of the contested goods are dissimilar. As the 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.

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

Solveiga BIEZA

Christophe DU JARDIN

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.