OPPOSITION No B 3 070 723

Höfer Chemie GmbH, Zur Fabrik 2, 66271, Kleinblittersdorf, Germany (opponent), represented by Patentanwaltskanzlei Vièl Und Wieske PartGmbB, Feldmannstr. 110, 66119, Saarbrücken, Germany (professional representative)

a g a i n s t

Hofer Group Holding Srl, Plan da la Sia 9, 39047 Santa Cristina Val Gardena (BZ), Italy (applicant), represented by Società Italiana Brevetti S.p.A., Stradone San Fermo, 21/B, 37121 Verona, Italy (professional representative).

On 22/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 723 is partially upheld, namely for the following contested goods and services:

Class 1: Water treatment chemicals for use in swimming pools and spas; Water softening substances; Anti-incrustants; Carbon for filters; Carbon for filters for removing organic contaminants from water; Chlorine; Filtering materials [chemical preparations]; Filtering materials [mineral substances]; Filtering materials [vegetable substances]; Chemical compositions for water treatment; Salt for preserving, other than for foodstuffs; Chemical reagents, other than for medical or veterinary purposes; Water treatment chemicals for use in swimming spas; Water treatment minerals for use in swimming pools and spas; Non-halogenic oxidizing compound for spas.

Class 3: Facial massage oils; Body massage oils; Aromatic oils; Aromatherapy preparations; Seaweed for cosmetology; Non-medicated cosmetics and toiletry preparations; Hair preparations and treatments; Hair preparations and treatments; Hair and body wash; Cosmetics for the use on the hair; Shampoo; Hair spray; Hair spray; Oils for hair conditioning; Hair wax; Hair balm; Hair masks; Hair care preparations, not for medical purposes; Tints for the hair; Hair straightening preparations; Cosmetic hair lotions; Preparations for setting hair; Hair gel; Hair creams; Hair preservation treatments for cosmetic use; Beard care preparations; Body and facial oils; Body oils [for cosmetic use]; Body oil spray; Perfume; Pomades for cosmetic purposes.

Class 5: Algaecides [chemicals for swimming pool maintenance].

Class 35: Retailing, online sale or wholesaling of the following goods: cosmetics, algicides.

2. European Union trade mark application No 17 894 005 is rejected for all the above goods and services. It may proceed for the remaining goods and services in Classes 1, 6, 7, 9, 11, 19, 20, 22 and 35 as well as for the uncontested services in Classes 37 and 42.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 894 005 (figurative mark), namely against all the goods and services in Classes 1, 3, 5, 6, 7, 9, 11, 19, 20, 22, and 35. The opposition is based on German trade mark registration No 30 201 2008 732 ‘Höfer Chemie’ (word mark), in relation to which the opponent invoked Article 8(1)(b) EUTMR. The opposition is also based on Article 8(4) EUTMR and the following rights:

- the company name ‘Höfer Chemie GmbH’, domain names hoefer-chemie.de and hoefer-shop.de, used in the course of trade in Germany;

- domain names: hoefer-shop.fr, hoefer-shop.be, hoefer-shop.at and hoefer-shop.nl, used in the course of trade in France, Belgium, Austria and, respectively, the Netherlands;

- domain name hoefer-chemie.com used in the course of trade in Austria, Belgium, France, Germany and the Netherlands.

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

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

a) The goods and services

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

Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soap; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices.

Class 5: Disinfectants; Preparations for destroying noxious animals; Fungicides, herbicides.

The contested goods and services are the following:

Class 1: Water treatment chemicals for use in swimming pools and spas; Water softening substances; Agglutinants for concrete; Deicers; Anti-incrustants; Biochemical catalysts; Carbon for filters; Carbon for filters for removing organic contaminants from water; Chlorine; Filtering materials [chemical preparations]; Filtering materials [mineral substances]; Filtering materials [vegetable substances]; Damp-proofing chemicals, except paints, for masonry; Textile-waterproofing chemicals; Waterproofing chemicals (Cement- -), except paints; Fluids for hydraulic circuits; Plasticizers; Plastisols; Chemical compositions for water treatment; Salt for preserving, other than for foodstuffs; Chemical reagents, other than for medical or veterinary purposes; Water treatment chemicals for use in swimming spas; Water treatment minerals for use in swimming pools and spas; Non-halogenic oxidizing compound for spas.

Class 3: Facial massage oils; Body massage oils; Aromatic oils; Aromatherapy preparations; Seaweed for cosmetology; Non-medicated cosmetics and toiletry preparations; Hair preparations and treatments; Hair preparations and treatments; Hair and body wash; Cosmetics for the use on the hair; Shampoo; Hair spray; Hair spray; Oils for hair conditioning; Hair wax; Hair balm; Hair masks; Hair care preparations, not for medical purposes; Tints for the hair; Hair straightening preparations; Cosmetic hair lotions; Preparations for setting hair; Hair gel; Hair creams; Hair preservation treatments for cosmetic use; Beard care preparations; Body and facial oils; Body oils [for cosmetic use]; Body oil spray; Perfume; Pomades for cosmetic purposes.

Class 5: Algaecides [chemicals for swimming pool maintenance].

Class 6: Swimming pools [metal structures]; Metal building materials; Transportable buildings of metal; Swimming pools [metal structures]; Pipes and tubes of metal; Steel masts; Steel sheets; Steel pipes; flexible steel pipe; Jets of metal; Rings of metal; Reinforcing materials, of metal, for concrete; Reinforcing materials of metal for pipes; Reinforcing materials of metal for pipes; Fittings of metal for compressed air ducts; Collars of metal for fastening pipes; Bars for metal railings; Cabanas of metal; Padlocks; Duckboards of metal; Tiles of metal for building; Tile floorings of metal; Hinges of metal; Water-pipe valves of metal; Drain traps [valves] of metal; Metal barriers; Metal billets; Tin bars; Safety grilles of metal for pools; Covers, not of metal, for pools; Elbows of metal for pipes; Copper rings; Vats of metal; Stair treads [steps] of metal; Drainage pipes of metal; Water-pipes of metal; Metal ladders; Branching pipes of metal; Grids of metal; Laths of metal; Latches of metal; Diving boards of metal; Door handles of metal; Gates of metal; Porches of metal [building]; Porches of metal [building]; Door openers, non-electric; Door panels of metal; Metal bolts for locking doors; Metal door bolts; Metal door bolts; Linings of metal for building; Wall claddings of metal [building]; Wall linings of metal [building]; Wire gauze; Turnstiles, not automatic; Foot baths and basins of metal; Prefabricated elements, namely protective barriers of metal for pools; Panels of metal for building pools; Partitioning panels of metal; Metal hardware; Small items of metal hardware.

Class 7: Suction machines for industrial purposes; Suction machines for swimming pools; Accessories for suction machines intended for pools; Installations for the suction of swimming-pool water; Suction pipes for swimming-pool water; Pumps for heating installations and pools; Water heaters [parts of machines]; Cartridges for filtering machines; Filters [parts of machines or engines]; Joints (Universal -) [Cardan joints]; Pump diaphragms; High pressure washers; Steam cleaning machines; Cleaning (machines and apparatus for- ) [electric]; Electric brushes for cleaning swimming pools; Electric robots for cleaning swimming pools; Pumps [machines]; Pumps [parts of machines, engines or motors]; Pumps intended for pools and balneotherapy installations; Compressed air pumps; Compressed air pumps for pools; Devices for pumping water using a centrifugal pump forming part of an independent module for pools; Pumps for heating installations; Steam traps; Automatic waste water valves; Reels, mechanical, for flexible hoses; Electric motors for rolling up swimming pool covers (tarpaulins); Robots [machines]; Self-regulating fuel pumps; Water pumps for swimming pools; Water pumps for spa baths.

Class 9: Scientific apparatus and instruments; Sound transmitting apparatus; Nets for protection against accidents; Air analysis apparatus; water testing apparatus; Chlorine and isocyanuric acid level; Measuring and regulating apparatus and instruments, being automatic or non-automatic, for water analysis, treatment and control in pools; Whistle alarms; Alarms; Amplifiers; Testing apparatus not for medical purposes; Acoustic alarms; Safety tarpaulins; Beacons, luminous; Barometers; Life buoys; Signaling buoys; Lifebelts; Diving suits; Heat regulating apparatus; Flashing lights [luminous signals]; Detectors; Circuit breakers; Thermal switches; Dosimeters; Water level indicators; Fire escapes; Electric couplings; Connections for electric lines; Gloves for divers; Life vests; Hydrometers; Temperature indicating apparatus; Gauges; Manometers; Divers' masks; Measuring devices, electric; Measuring instruments; Measuring apparatus; Nose clips for divers and swimmers; Nautical apparatus and instruments; Naval signalling apparatus; Ear plugs for divers; Life-saving rafts; Electric locks; Signalling whistles; Sirens; Scientific, signalling and checking (supervision) apparatus and instruments; Computer software; Temperature control apparatus [electric switches]; Control panels for managing swimming pools; Electric or electronic control modules for water management; Pressure regulators; Temperature controlling apparatus; Energy control devices; Heat regulating apparatus; Flow control installations [electric]; Control devices for water management; Pool alarms; Electronic indicator boards; Scientific measuring and monitoring apparatus and instruments for swimming pools, including: electronic pool apparatus enabling the analysis of water parameters, apparatus for chemically analysing the water, apparatus for measuring chlorine levels; Temperature sensors; Ph meters; Ohmmeters; Apparatus for measuring redox potentials; Apparatus for measuring ultraviolet indexes; Electronic apparatus for controlling a swimming pool water filtration device; Scientific, measuring, signalling and checking (supervision) apparatus and instruments; Apparatus for analysing water, chlorine content and isocyanuric acid content; Automatic or non-automatic measuring and regulating apparatus and instruments for the analysis, maintenance, treatment and testing of swimming pool water; Alarms; Electrical cabling; Instrument panels [electric]; Junction boxes [electricity]; Glass covered with an electrical conductor; Pool alarms; Electric flow meters; Contacts, electric; Electric wiring harnesses; Electric sensors; Touch pads [electric]; Electrical terminal blocks; Electrical receivers; Electrical circuit breakers; Electric wires; Electrical conductors; Electric cables; Inverters [electricity]; Electricity transformers; Switches, electric; Accumulators, electric; Electronic buzzers; Converters, electric; Electric oscillators; Record players; Electric circuit closers; Collectors, electric; Electrical recorders; Electrical circuit testers; Relays, electric; Electric boosters; Electrical adapters; Electric couplings; Electric couplings; Electric connectors; Electrical terminators; Electric diodes; Electrical rectifiers; Electrical inductors; Electric reactors; Armatures [electricity]; Electric thermostats; Electric timers; Limiters [electricity]; Electrical transmitters; Electrical controls; Electrical circuits; Terminals [electricity]; Electrical amplifiers; Buffers [electric]; Electricity measuring instruments; Electrical switch cabinets; Electrical fuses; Electrical distributors; Battery chargers; Electrical phonomotors; Electric alarms; Electric cords; Condensers [capacitors]; Junctions [electrical]; Coils, electric; Electric switch plates; Resistances, electric; Electrical power extension cords; Ducts [electricity]; Electrical plugs; Batteries, electric; Electric signs; Electrical sockets; Ducts [electricity]; Push button panels (Electrical -); Inverters [electricity]; Reducers [electricity]; Connectors [electricity]; Electrical adapters; Electrical inductors; Armatures [electricity]; Limiters [electricity]; Electric flasher switches; Alarm bells, electric; Electrical reducing transformers; Terminals [electricity]; Wire connectors [electricity]; Insulated electrical cables; Insulated electrical cables; Insulated electrical cables; Insulated electrical cables; Mounting cords [electrical]; Terminal controllers [electric]; Electrical terminal connectors; Integrated electronic circuits; Junction boxes [electricity]; Electric breakers [switches]; Printed electrical circuits; Topographic apparatus [electric]; Tactile switches [electric]; Metallic cables [electric]; Domestic switches [electric]; Electrical frequency converters; Electric power supply sockets; Cable junctions for electric cables; Regulating modules (Electric -); Electric current switches; Commutation (Electric apparatus for -); Power dividers [electric]; Electric current meters; Electrical controllers; Measuring devices, electric; Plates for batteries; Connections for electric cables; Connections for electric cables; Connections for electric cables; Electric circuit interrupters; Electric control apparatus; Regulating apparatus, electric; Electrical switch timers; Electric power analyzers; Electric control panels; Components for electric circuits; Components for electric circuits; Electric switch plates; Housings for electrical apparatus; Electrical switch assemblies; Resistances, electric; Power distributors [electrical]; Electrical power extension cords; Circuits [electric or electronic]; Electrical power extension cords; Converters, electric; Electrical coupling sleeves; Adapter connectors (Electric -); Mains testers (Electric -); Markers for electric wire; Ships logs [electric]; Electric communication apparatus; Contact blocks (Electric -); Distribution boards [electricity]; Process controllers [electric]; Electric batteries for vehicles; Electrical wiring installations; Switchgear [electric]; Switchgear [electric]; Interface cables [electric]; Rotary switches (Electric -); Electric fuse boxes; Terminal blocks (Electrical connecting -); Electric current transformers; Electric current sensors; Luminous electric signs; Power strips with movable sockets; Rechargeable electric batteries; Electricity indicators; Anti-interference devices [electricity]; Inverters [electricity]; Terminal boxes [electrical]; Winding wires [electricity]; Electric batteries for powering electric vehicles; Push switches (Electrical -); Switchboxes [electricity]; Connection units (Electric -); Connection units (Electric -); Electrical signalling apparatus; Grids for batteries; Alarm bells, electric; Safety relays [electric]; Markers for electrical conductors; Switched spurs [electric]; Electric navigational instruments; Cable splices for electric cables; Ducting for electric cables; Ducting for electric cables; Armatures for use in electrical apparatus; Electric door bells; Electric door bells; Electrical circuit boards; Connector sockets (Electric -); Contact boards (Electric -); Electrical resistance coils; Electric terminal lugs; Metallic wires [electric]; Linear actuators [electric]; Electrical resistance wire; Electrical telephone wires; Adapter cables (Electric -); Insulated electrical connectors; Electric alarms for smoke; Electric alarms for fire; Enamelled electric wires; Plastic coated wire [electric]; Electronic pocket translators; Electrical header connectors; Underwater power cables; Plug-in cartridges [electric]; Electric valves [thermionic]; Ducts [electricity]; Electrical control boards; Switch panels [electric]; Electric control panels; Mains transformers (Electric -); Electric current rectifiers; Conduit for electric cables; Conduit couplings [electric]; Connection boards [electric]; Cable channels (Electric -); Electric voltage transformers; Electrical weighing apparatus; Electrical test apparatus; Electrical control circuits; Electrical distributing busbars; Toggle switches [electric]; Plug-in electrical connectors; Sheaths for electric cables; Push button switches (Electrical -); Panels for the connection of electricity; Sheaths for electrical wires; Electric light switches; Splice connectors [electric]; Monitoring apparatus, electric; Electric smoke sensors; Electric smoke sensors; Electric power supply units; Electric power supply units; Batteries for electric vehicles; Cables and wires; Batteries for electric vehicles; Detectors for electric meters; Electrical cables for use in connections; Connecting electrical cables; Electric call bells; Electrical charge controllers; Uninterruptible electrical power supplies; Electric telecommunications apparatus; Locks (electric) for bicycles; Electronic cruise control apparatus; Electronic cruise control apparatus; Electrical and electronic components; Electrical engineering software; Electric wire harnesses for automobiles; Switchboxes [electricity]; Electric power units; Dry-cell batteries; Electric navigational instruments; Card operated electronic locks; Metal ducts [electric]; Monitoring units [electric]; Socket outlets (Electric -); Splice boxes [electric]; Electrical plugs; Electrical plugs; Electrical plugs; Electrical delay lines; Programming units (Electric -); Electric shunt boxes; Control boxes (Electric -); Metal signboards [electric]; Cable boxes (Electric -); Power adapters; Power adapters; Locks [electric] with alarms; Directories [electric or electronic]; Mounting cradles [electrical]; Connections for electric lines; Contact fuses (Electric -); Electrical power outlet boxes; Metal locks [electric]; Plug boxes [electric]; Junction boxes [electricity]; Power line conditioners; Electric blanking plugs; Baby scales; Sleeved rails, electric; Electric control valves; Electric control valves; Electrical cells and batteries; Motor vehicle power locks; Converters for electric plugs; Electricity conduits; Switchboxes [electricity]; Switchboxes [electricity]; Distribution boxes [electricity]; Branch boxes [electricity]; Distribution consoles [electricity]; Distribution boards [electricity]; Switch points [electric]; Junction boxes [electricity]; Junction boxes [electricity]; Electronic door locks; Control installations (Electric -); Electrical outlet plates; Holders for electric coils; Holders for electric coils; Shaver sockets (Electric -); Electric and electronic components; Electric locks for vehicles; Electrical circuits and circuit boards; Electric resistors [for telecommunication apparatus]; Electric current control devices; Choking coils for use in electrical apparatus; Electric power distribution apparatus; Electric and electronic video surveillance installations; Electric capacitors [for telecommunication apparatus]; Charging stations for electric vehicles; Electric wire harnesses for automobiles; Combination locks (metal -) [electric]; Travel adaptors for electric plugs; Electrical access control apparatus; Power line protectors; Electric fence energisers; Combination locks (non-metallic -) [electric]; Electric fence controllers; Process control units [electric]; Mains power units (Electric -); Electrical remote control apparatus; Junction sleeves for electric cables; Electrical remote control apparatus; Chargers for electric batteries; Cable identification markers for electric cables; Discharge tubes, electric, other than for lighting; Tags for identifying electric cables; Tags for identifying electric conductors; Process controlling apparatus [electric]; Tap changers for electric transformers; Electricity storage apparatus; Control modules (Electric or electronic -); Safety locking devices [electric]; Score display apparatus [electric]; Mains monitoring apparatus (Electric -); Access security apparatus (Electric -); Electrical access control apparatus; Electrical access control apparatus; Panels for the distribution of electricity; Identification sheaths for electric wires; Information carriers [electric or electronic]; Flow control installations [electric]; Ballasts for electrical lighting fittings; Junction boxes for electric wires; Target location apparatus [electric]; Electrical power distribution blocks; Monitoring control apparatus [electric]; Target seekers [electric]; Safety monitoring apparatus [electric]; Tags for identifying electric wires; Electric power controllers; Voltage regulators for electric power; Target trackers [electric]; Push leaf switches (Electrical -); Identification threads for electric wires; Heat resistant electric wires; Heat resistant electric wires; Connection blocks [electric cable]; Flexible sheaths for electric conductors; Male connectors for electrical cables; Regulated power supply apparatus; Releasable locking devices [electric]; Target surveillance apparatus [electric]; Terminal boxes for electric conductors; Electrical amplifiers for use with musical instruments; Wires (Electric -) of metal alloys; Electrical amplifiers for sound signals; Pick-ups for electrical musical instruments; Electrical and electronic burglar alarms; Rubber covered electrical wires; Electric contacts of precious metal; Threaded electrical cable connectors; Mechanical dialling locks [electric]; Mechanical locks [electric, metal]; Mechanical locks [electric, non-metallic]; Fluorescent lamp ballast for electric lights; Electricity mains apparatus; Electric loss indicators; Electricity measuring instruments; Electricity measuring instruments; Electricity control panels; Photovoltaic apparatus for generating electricity; Access control systems (Electric -); Winding wires [electricity]; Electricity control panels; Distribution boxes [electricity]; Circulators [electric or electronic components]; Mineral insulated electric cables; Voltage surge suppressors; Non-electrical distress beacons; Flexible sheaths for electric cables; Robotic electrical control apparatus; Theft prevention installations, electric; Insulated cable for electrical installations; Power adapters; Joining units [electrical contacts]; Skeleton switches [electric]; Valve operators [electric controls]; Noise suppressors [electrical components]; Wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems; Scientific and laboratory devices for treatment using electricity; Electrically cooled clothing for protection against accident or injury; Apparatus for measuring, monitoring and analyzing electricity consumption; Photovoltaic apparatus and installations for generating solar electricity; Photovoltaic apparatus and installations for generating solar electricity; Electric installations for the remote control of industrial operations; Electric and electronic effects units for musical instruments; Photovoltaic apparatus for converting solar radiation to electrical energy; Temperature control apparatus [electric switches] for vehicles; Temperature control apparatus [electric switches] for machines; Photovoltaic installations for generating electricity [photovoltaic power plants]; Optical fibers [fibres] [light conducting filaments]; Electric control devices for energy management; Apparatus and instruments for accumulating electricity; Apparatus and instruments for regulating electricity; Apparatus and instruments for transforming electricity; Apparatus and instruments for switching electricity; Electric cables for the transmission of sounds and images; Apparatus and instruments for controlling electricity; Data processing equipment and accessories (electrical and mechanical); Electric motor checking [monitoring or supervision] apparatus; Neon light indicators for use in electrical circuits; Apparatus and instruments for controlling electricity; Portable solar panels for generating electricity; Electricity mains (Materials for -) [wires, cables]; Electric installations for the remote control of industrial operations; Control stations (Remote, electric or electronic -); Electric and electronic security apparatus and instruments; Apparatus for monitoring electrical energy consumption; Apparatus for diagnosing electrical power installations; Computer software for the remote control of electric lighting apparatus; Gender changers in the nature of electrical adapters; Process controlling apparatus [electric]; Ignition (Electric apparatus for remote -); Electrical access control apparatus; Traffic control apparatus [electronic]; Electric power controllers; Electric power controllers; Slatted blind controls [electric]; Temperature control apparatus [electric switches]; Transmitters for the transmission of electric signals; Cables for electrical signal transmission; Electronic control circuits for electric fans; Apparatus and instruments for conducting electricity; Electric control devices for heating management; Electrified rails for mounting spot lights; Electric and electronic musical effects equipment; Electronic control circuits for electric heaters; Apparatus, instruments and cables for electricity; Apparatus for controlling static electricity; Valves (Electric controls for automatically operating -); Electrical alarm instruments (anti-theft -) [other than for vehicles]; Solar energy collectors for electricity generation; Connecting modules for electric controls; Solar panels; Solar cells for electricity generation; Information storage apparatus [electric or electronic]; Monitoring apparatus, electric; Electrical controls for irrigation sprinkler systems; Starters for electric lights; Power controllers; Panels for the distribution of electricity; Panels for the distribution of electricity; Panels for the connection of electricity; Electricity control panels; Instruments for distributing electrical current; Discharge tubes, electric, other than for lighting; Discharge tubes, electric, other than for lighting; Metal direction indicator panels [electric]; Process controlling apparatus [electric]; Monitors; Control circuits; Plugboards; Electronic control systems; Electronic control units; Electronic control circuits; Programmable controllers; Thermostatically controlled valves; Electric control apparatus; Sensors used in plant control; Temperature controlling apparatus; Communications controllers; Network controlling apparatus; Boiler control instruments; Boiler control instruments; Network monitoring cameras; Access control installations (Automatic -); Access control units (Automatic -); Computer software for time control; Vacuum climatic testing apparatus; Process controlling software; Electronic baby monitoring devices; Computer programs for searching the contents of computers and computer networks by remote control; Access control cards [encoded or magnetic]; Testing apparatus for checking electronic devices; Temperature controllers apparatus for use in vehicle engines; Testing and quality control devices; Temperature control apparatus [thermostats] for machines; Control panels for security alarms; Network monitoring cameras for surveillance; Computer software for the monitoring of computer systems; Network monitoring cameras for surveillance; Computer software for the monitoring of computer systems.

Class 11: Swimming pool chlorinating apparatus; Spas [heated pools]; Filters for use with swimming pools; Fixed underwater lighting installations for swimming pools; Baths (Spa -) [vessels]; Massage bath installations; Baths (Spa -) [vessels]; Baths (Spa -) [vessels]; Fitted liners for hot tubs; Fittings for massage baths; Hot tub heaters; Hot tub filters; Fitted spa covers; Jet nozzles for warm air circulations in bubble baths; Jet nozzles for warm air circulations in bubble baths; Jet nozzles for generating massage currents in spa baths; Bath plumbing fixtures; Bathroom installations for water supply purposes; Steam baths; Thermal baths; Steam baths, saunas and spas; Sauna heaters; Steam facial apparatus [saunas]; Sauna apparatus; Saunas (Apparatus for heating -); Installations for heating swimming pools; Combined heating and air conditioning apparatus; Heating, ventilating, and air conditioning and purification equipment (ambient); Humidification apparatus for use with air conditioning apparatus; HVAC systems (heating, ventilation and air conditioning); Air conditioning fans; Ventilating installations; Air conditioning apparatus; Ventilation [air-conditioning] installations and apparatus; Installations for de-humidifying; Installations for humidifying; Steam generators for use with steam baths; Lighting installations; Air conditioning fans; Water and pool water distribution apparatus; Apparatus and installations for softening water and pool water; Hot air bath fittings; Bathtubs; Bath linings; Spa baths; Bath fittings; Heaters for baths; Turkish bath cabinets, portable; Radiator caps; Caps intended for water distribution systems for pools; Shower stalls; Water heating installations for pools; Heating apparatus, electric; Electric water heating apparatus for pools; Water conduits installations; Mixer taps for water pipes; Disinfectant apparatus; Swimming pool water disinfection apparatus; Showers; Water filtering apparatus; Filtering apparatus for swimming pool water; Water intake apparatus; Water purifying apparatus and machines; Water conditioning apparatus; Water supply installations; Water cooling installations; Ornamental fountains; Filters for swimming pool water; Lighting apparatus; Lighting apparatus; Filters (parts for domestic pool installations); Street lamps; Chinese lanterns; Lanterns for lighting; Swimming pool lights; Water purifying and filtering apparatus and machines for pools; Water heaters [apparatus]; Water heaters for pools; Regulating and safety accessories for water apparatus and water pipes; Whirlpool-jet apparatus; Pressure water tanks; Solar heating installations for pools; Heat exchangers, other than parts of machines; Dehumidifiers intended for covered pools; Hydraulic couplings, in particular pipes (parts of sanitary installations), hydraulic thermostatic valves (parts of heating installations), and boiler pipes (tubes) for swimming pool heating installations; Heated covers for swimming pools; Enclosures of metal for showers; Cartridges for swimming pool water filtering machines; Control devices for swimming pool water filtering systems; Non-metallic shower stalls; Baths (Spa -) [vessels]; Whirlpool-jet apparatus; Spa pools; Water desalinating apparatus; Filters for wastewater; Transportable instruments for processing sewage; Heating boilers; Water filters; Water dispensers; Water mixing appliances; Water purifying apparatus; Water coolers; Water sterilizers; Hot water heaters; Water softening units; Taps [faucets]; Water ionizers; Ionic water generators; Coarse strainers for water screening; Pressure water tanks; Water heaters [apparatus]; Drinking fountains; Water outlets [faucets]; Hydrants; Decorative water fountains; Ornamental fountains; Taps [faucets]; Filters for drinking water; Storage water heaters; Water treatment apparatus for water softening; Installations for cooling drinking water; Pressure water tanks; Pressure water tanks; Water cooling towers; Water regulating apparatus; Water filtering apparatus; Water filtering apparatus; Water filtering units; Water filtering installations; Water filtering apparatus; Water cisterns; Water cooling installations; Hot water cylinders; Hot water installations; Hot water apparatus; Water sterilizers; Strainers for water lines; Chilled purified water dispensers; Water faucet spout; Water control valves; Water mixing appliances; Filters for water purifiers; Electric hot-water bottles; Water conditioning units; Water purification units; Water conditioning apparatus; Water intake apparatus; Water coolers and heaters; Water distribution installations; Water distilling units; Water conduits installations; Water supply installations; Hot water boilers; Electric water heating apparatus; Settler apparatus for water; Water softening installations; Water softening apparatus; Hydrants for water supply; Filters for drinking water; Water purifying installations; Water conditioning apparatus; Water purifying installations; Water conditioning apparatus; Washers for water taps; Cylinders for the heating of water; Filters for water purifiers; Water filtering installations; Water filtering apparatus; Water filtering apparatus for domestic use; Water disinfection apparatus; Electrically controlled water faucets; Water treatment apparatus for water softening for domestic use; Water purifying units for producing potable water; Induction water heaters; Water purification tanks; Water conditioning apparatus; Water purifying apparatus; Water purifying apparatus; Mixer taps for water pipes; Mixer taps for water pipes; Apparatus for decalcifying water; Water treatment filters; Water sterilizers; Water coolers; Apparatus for filtering drinking water; Electrically heated hot water tanks; Air cleaning apparatus; Water distilling units; Water desalinating apparatus; Taps for water supply; Sanitary water conduit fittings; Water supply installations; Water supply installations; Water softening apparatus; Water softening installations; Water softening apparatus; Membranes for the filtration of water; Water jets for use in hot tubs; Electrostatic filters for water filtration; Gas boilers for water heating; Water taps being parts of sanitary installations; Mixer taps for water pipes; Hand held portable water purification apparatus; Filters for use with apparatus for water supply; Filters for use with apparatus for water supply; Apparatus for descaling water; Water bed heaters; Desalination plants; Immersion heaters; Regulatory fittings for water pipes; Appliances for water distribution [automatic]; Bath armatures for water control; Apparatus for controlling water supply; Taps for regulating water flow; Apparatus for the supply of water for sanitary purposes; Boilers for hot water supply installations; Water regulating valves [regulating accessories]; Appliances for water filtration [other than machines]; Water conditioning apparatus; Water distributor armatures for heating; Water purifying apparatus and machines; Water regulating valves [safety accessories]; Stop valves for regulating water; Water softening apparatus and installations; Filter apparatus for water supply installations; Chemical installations for conditioning drinking water; Ionization apparatus for the treatment of water; Chlorinating units for water treatment; Safety accessories for water or gas apparatus and pipes; Installations for water treatment under osmotic process; Filters for sanitary water distribution apparatus; Water pressure reducers [safety accessories]; Water filtering apparatus for domestic use; Water filtering apparatus for industrial use; Water desalinating apparatus utilizing reverse osmosis; Regulating accessories for water or gas apparatus and pipes; Water treatment units for aerating and circulating water; Feed water heaters [for industrial purposes]; Membrane purifying apparatus for the purification of water; Regulating and safety accessories for water apparatus; Gravimetric dry flow feeders for water treatment; Reverse osmosis elements for reducing the brackishness of water; Spray units being parts of water supply installations; Stop valves being safety apparatus for water apparatus; Regulating and safety accessories for water and gas installations; Flow restrictors for reverse osmosis water purification units; Reverse osmosis elements for domestic use in reducing the salt content of water; Reverse osmosis elements for industrial use in reducing the salt content of water; Ultraviolet sterilization units [water treatment equipment]; Reverse osmosis filtration units [water treatment equipment]; Shower heads being parts of water supply installations; Pressure relief valves [safety apparatus] for water pipes; Pressure supervision apparatus [safety apparatus for water pipes]; Reverse osmosis elements for reducing the salt content of water; Water purification, desalination and conditioning installations; Swimming pool heaters; Gas boilers for the heating of swimming pools; Hot tubs; Bath screens; Tub spouts; Hydrotherapy baths; Tub wastes; Bathtubs; Whirlpool spa bath installations; Portable foot baths; Tub overflows; Bath linings; Jets for hydrotherapy baths; Sitz baths; Baths incorporating apparatus for assisting exit out of the bath; Bath linings, fitted; Child safe protective covers for bathtub spouts; Whirlpool jets; Hydroponic growing system; Foot spas; Microbubble generators for baths; Hydromassage bath apparatus; Transportable instruments for processing water; Chemical sterilization units [water treatment equipment]; Cartridge filtration units [water treatment equipment]; Hydromassage baths (hydrotherapy or relaxation pools of metal); Balneotherapy pools of metal.

Class 19: Swimming pools [structures, not of metal]; Non-metallic transportable buildings; Spas (hydrotherapy or relaxation pools, not of metal), balneotherapy pools, not of metal; Folding doors, not of metal; Concrete building elements; Bituminous products for building; Wall tiles, not of metal, for building; Floor tiles, not of metal; Shuttering, not of metal, for concrete; Water-pipes, not of metal; Buildings, not of metal; Paving slabs, not of metal; Drain pipes, not of metal; Branching pipes, not of metal; Stair treads (steps), not of metal; Staircases, not of metal; Staircases, not of metal; Tarred strips for building; Laths, not of metal; Stair-treads [steps], not of metal; Non-metal posts; Palisading, not of metal; Floors, not of metal; Diving boards, not of metal; Non-metal gates; Door panels, not of metal; Cladding, not of metal, for building; Copings, not of metal, edgings, not of metal, foot baths and paddling pools, not of metal, buildings, not of metal, namely technical units of plastic for holding a swimming pool filtering and heating system; Polystyrene panels for use in building; Swimming pools [structures, not of metal]; Paddling pools [structure] made of non-metallic materials; Ponds [non-metallic structures]; Aquaria [structures]; Aquaria [structures]; Aggregates for use in the preparation of concrete; Roof flashing, not of metal; Drywall corner bead not of metal [building materials]; Angle irons, not of metal; Archways made from non-metallic materials; Architraves of non-metallic materials; Cast concrete decorative articles; Ceramic articles for construction purposes; Reinforcing materials, not of metal, for building; Scaffolding, not of metal; Roofing slates; Lintels, not of metal; Cladding board (Non-metallic -); Building panels, not of metal; Planks of non-metallic materials for use in construction; Laminated boards (Non-metallic -) for building use; Building panels, not of metal; Building boards made from wood and waterproof resins; Floorboards; Blocks made from natural stone; Blocks (Non-metallic -) for use in flooring construction; Blocks (Non-metallic -) for construction; Building blocks incorporating insulating materials; Portable outdoor security cabins made of non-metallic materials; Hydrated lime for building purposes; Non-metallic water pipes [other than parts of sanitary installations]; Rigid pipes and valves therefor, non-metallic; Drain traps [valves], not of metal or plastic; Mosaic art tiles made of marble; Mosaic tiles; Reinforcing fabrics (Non-metallic -) for building; Stabilisation fabrics [geotextiles] (non-metallic -) for use in construction; Structures and transportable buildings, not of metal; Damp course materials (Non-metallic -); Screed; Statues and works of art made of materials such as stone, concrete and marble, included in the class; Building sections (Non-metallic -); Preformed building sections (Non-metallic -); Chutes (Non-metallic -) for building purposes; Non-metal artificial fish reefs; Cementitious protective coatings; Liquid plastics surface coatings for protection against moisture [not paints]; Cementitious waterproofing coatings; Cementitious waterproofing coatings; Building sheets (Non-metallic -); Stone, rock, clay and minerals; Rubber floor tiles; Tile floorings, not of metal; Pedestals (non-metallic -) [structures]; Natural stone; Building stone; Artificial stone; Worked natural stone; Mobile pedestals [structures] made of non-metallic materials; Prefabricated non-metal buildings; Prefabricated building components (Non-metallic -); Prefabricated building components (Non-metallic -); Prefabricated building components (Non-metallic -); Pre-fabricated nonmetal architectural columns; Modular units (Non-metallic -) for constructing prefabricated buildings; Prefabricated building elements (Non-metallic -) for on site assembly; Screed coatings; Cladding panels (Non-metallic -); Cladding materials (Non-metallic -); Underlayment screed; Cladding board (Non-metallic -); Weather boarding (Non-metallic -); Water-pipe valves, not of metal or plastic.

Class 20: Furniture and furnishings; Furniture for saunas; Head-rests [furniture]; Headrests of wood for wellness centres; Neck supports; Portable back support for use with chairs; Back support cushions, not for medical purposes; Baby head support cushions; Massage tables.

Class 22: Covers for swimming pools; Cord; Rope cords; Nets; Tarpaulins; Tents for camping; Sacks for the transport (not included in other classes) and storage of materials in bulk; Ropes, not of metal; Rope ladders; Fishing nets; Hammocks; Jute; Raw fibrous textile materials; Cables, not of metal; Safety tarpaulins of textile for swimming pools; Safety tarpaulins of plastic for swimming pools; Safety tarpaulins, not of metal, for swimming pools.

Class 35: Advertising; Newspaper and newsletter subscriptions, for others; professional business consultancy; Import-export agencies; Commercial information agencies; Dissemination of advertising matter; Publicity columns preparation; Electronic publicity columns preparation; Dissemination of advertising on an online electronic communications network; Business transactions via an online electronic communications network; Demonstration of goods; Sample distribution; Distribution of advertising material; Handbill distribution; Handbill distribution; Issuing of publicity leaflets; Distribution of prospectuses for advertising purposes; Distribution of prospectuses and samples for advertising purposes; Direct mail advertising; Distribution of flyers, brochures, printed matter and samples for advertising purposes; Distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; Updating of advertising material; Marketing studies; Organization of exhibitions for commercial or advertising purposes; Organization of exhibitions for commercial or advertising purposes; Organization of exhibitions for commercial or advertising purposes; Organisation of trade fairs for commercial or advertising purposes; Rental of advertising time on communication media; Rental of advertising space; Market research; Opinion polling; Opinion polling; Opinion polling; Assistance in management of business activities; Sales promotion for others; Advertising by mail order; Direct mail advertising; Dissemination of advertising matter by mail; Publication of publicity texts; Advertising, including on-line advertising on a computer network; On-line advertising on a computer network; On-line advertising on a computer network; Advertising by mail order; Radio advertising; Television advertising; Commercial information services, via the internet; Competitive intelligence services; Retailing, online sale or wholesaling of the following goods: water treatment chemicals for pools, chemical additives to water for pools, adhesives for tiles and wall tiles, water-softening preparations, agglutinants for concrete, antifreeze, anti-incrustants, biochemical catalysts, carbon for filters, chlorine, preparations for preserving masonry (other than paints and oils); Retailing, online sale or wholesaling of anti-limescale preparations, other than for household purposes; Retailing, online sale or wholesaling of the following goods: filtering materials, damp-proofing preparations for masonry, other than paints, waterproofing preparations for textiles, waterproofing preparations for cement, other than paints, non-automatic turnstiles, bolts, foot baths and shallow wading pools of metal, prefabricated elements, namely protective barriers of metal for pools; Retailing, online sale or wholesaling of the following goods: panels of metal for building pools, separating panels of metal, lower slopes, small doors; Retailing, online sale or wholesaling of the following goods: non-mechanical winders for flexible tubes (of metal), covers, nets and coverings for pools, suction machines for industrial use, suction machines for pools, accessories for suction machines intended for pools, water suction installations for pools, water suction tubes for pools; Retailing, online sale or wholesaling of the following goods: pumps for heating and pool installations, water heaters (parts of machines), cartridges for filtering machines, cartridges for water filtering machines for pools, filtering machines, filters (parts of machines or engines), joints (parts of engines), universal joints (Cardan joints), pump diaphragms, high-pressure cleaners; Retailing, online sale or wholesaling of the following goods: cleaning appliances utilising steam, electric cleaning machines and apparatus, electric mops for cleaning pools, electric robots for cleaning pools, pumps (machines), pumps (parts of machines, engines or motors), pumps intended for pools and balneotherapy installations; Retailing, online sale or wholesaling of the following goods: compressed air pumps, compressed air pumps for pools, devices for pumping water using a centrifugal pump forming part of an independent module for pools, pumps for heating installations; Retailing, online sale or wholesaling of the following goods: steam traps, automatic wastewater valves, control devices for water filtering systems for pools, mechanical winders for flexible tubes, covers, nets and coverings for pools, electric motors for winding pool coverings; Retailing, online sale or wholesaling of the following goods: robots (machines), scientific, measuring, signalling and checking (supervision) apparatus and instruments, sound transmitting apparatus, nets for protection against accidents, air analysis apparatus, apparatus for analysing water and chlorine and isocyanuric acid level; Retailing, online sale or wholesaling of the following goods: measuring and regulating apparatus and instruments, being automatic or non-automatic, for water analysis, maintenance, treatment and control in pools, alarms intended to prevent accidents, whistle alarms, alarms; Retailing, online sale or wholesaling of the following goods: sound amplifying apparatus, analysis apparatus, not for medical purposes, warning horns, safety tarpaulins, luminous signals, barometers, lifebuoys (floating), signalling buoys, lifebuoys for swimming; Lifebelts, Diving suits, Diving suits; Retailing, online sale or wholesaling of the following goods: heat regulating apparatus, flashing lights (signalling lights), self-regulating fuel pumps, detectors, telerupters, thermal circuit breakers, metering apparatus, dosimeters, water level indicators, fire escapes, electric couplings, connections for electric lines, floats for swimming; Retailing, online sale or wholesaling of the following goods: gloves for divers, swimming jackets, life jackets, hydrometers, temperature indicators, calipers, pressure gauges, divers' masks, electric measuring devices, measuring instruments, measuring apparatus, nose clips for divers and swimmers, support belts for learning to swim, nautical apparatus and instruments, naval signalling apparatus, ear plugs; Retailing, online sale or wholesaling of the following goods: ear plugs for divers, life-saving rafts; Retailing, online sale or wholesaling of the following goods: electric locks, signalling whistles, sirens, electronic display boards, thermometers, not for medical purposes, automatic turnstiles, water and pool water supply apparatus; Retailing, online sale or wholesaling of the following goods: apparatus and installations for softening water and pool water, hot air bath fittings, bath tubs, fittings for bath tubs, spa baths, bath fittings, heaters for baths, portable Turkish bath cabins, radiator caps, caps intended for water distribution systems for pools; Retailing, online sale or wholesaling of the following goods: shower cabinets, water heating installations for pools, electric heating apparatus; Retailing, online sale or wholesaling of the following goods: electric water heating apparatus for pools, chlorinating apparatus and devices for pools, water conduits installations, taps (cocks, spigots) for water pipes, disinfectant apparatus, water disinfecting apparatus for pools, showers, water filtering apparatus; Retailing, online sale or wholesaling of the following goods: water filtering apparatus for pools, water intake apparatus, water purifying apparatus and machines, water purification apparatus; Retailing, online sale or wholesaling of the following goods: water supply installations, cooling installations for water, ornamental fountains, water filters for pools, lighting apparatus and installations, filters (parts for domestic pool installations), pedestal lighting apparatus, festive lanterns, lanterns for lighting; Retailing, online sale or wholesaling of the following goods: projectors for pools, water purifying and filtering apparatus and machines for pools, water heaters (apparatus), water heaters for pools, regulating and safety accessories for water apparatus and water pipes; Retailing, online sale or wholesaling of the following goods: whirlpool-jet apparatus, pressure water tanks, solar heating installations for pools, heat exchangers, dehumidifiers intended for covered pools, hydraulic seals, heated covers for pools, building materials, not of metal; Retailing, online sale or wholesaling of the following goods: non-metallic transportable buildings, swimming pools (structures), not of metal, vats, not of metal, hydromassage baths (hydrotherapy or relaxation pools, not of metal); Retailing, online sale or wholesaling of the following goods: balneotherapy pools, not of metal, folding doors, not of metal, concrete building elements, bituminous products for building, cabanas and shower cubicles, not of metal, tiles, not of metal, for building, tile floorings, not of metal, drain traps (valves), not of metal or plastic; Retailing, online sale or wholesaling of the following goods: barriers, fences, safety gates, not of metal, for pools, shutters, not of metal, for pools, shuttering, not of metal, for concrete, water-pipe valves, not of metal or plastic; Retailing, online sale or wholesaling of the following goods: water-pipes, not of metal, buildings, not of metal, paving slabs, not of metal, drain pipes, not of metal, branching pipes, not of metal, coverings (construction materials), stair-treads (steps), not of metal, staircases, not of metal, tarred tape (construction); Retailing, online sale or wholesaling of the following goods: laths, not of metal, steps, not of metal, masts (poles), not of metal, palisading, not of metal, wall coverings, not of metal (construction), floors, not of metal; Retailing, online sale or wholesaling of the following goods: cosmetics, furniture, algicides.

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’, ‘such as’ and ‘including’, used in the applicant’s list of goods and services, indicates 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, these terms 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 applicant’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 1

The contested Water treatment chemicals for use in swimming pools and spas; Water softening substances; Anti-incrustants; Carbon for filters; Carbon for filters for removing organic contaminants from water; Chlorine; Filtering materials [chemical preparations]; Filtering materials [mineral substances]; Filtering materials [vegetable substances]; Chemical compositions for water treatment; Salt for preserving, other than for foodstuffs; Chemical reagents, other than for medical or veterinary purposes; Water treatment chemicals for use in swimming spas; Water treatment minerals for use in swimming pools and spas; Non-halogenic oxidizing compound for spas are similar to a low degree to the opponent’s goods in Class 5. This is because both sets of goods can coincide in purpose and/or method of use, such as preparations and substances used for cleaning and maintenance of swimming pools, including technical/structural characteristics and water quality of swimming pools and related water installations. These goods can coincide in distribution channels and relevant public.

The contested Agglutinants for concrete; Deicers; Biochemical catalysts; Damp-proofing chemicals, except paints, for masonry; Waterproofing chemicals (Cement-), except paints; Plasticizers; Plastisols; Textile-waterproofing chemicals; Fluids for hydraulic circuits are not similar to the opponent’s goods in Classes 3 and 5. These goods differ in nature, purpose, method of use and their specific intended use is different. They are normally produced by different companies and belong to very different fields and also target different consumers. They are not complementary or in competition either. Therefore, they are considered dissimilar.

Contested goods in Class 3

The contested Facial massage oils; Body massage oils; Non-medicated cosmetics and toiletry preparations; Hair preparations and treatments; Hair preparations and treatments; Hair and body wash; Cosmetics for the use on the hair; Shampoo; Hair spray; Hair spray; Oils for hair conditioning; Hair wax; Hair balm; Hair masks; Hair care preparations, not for medical purposes; Tints for the hair; Hair straightening preparations; Cosmetic hair lotions; Preparations for setting hair; Hair gel; Hair creams; Hair preservation treatments for cosmetic use; Beard care preparations; Body and facial oils; Body oils [for cosmetic use]; Body oil spray; Pomades for cosmetic purposes are included in the broad category of, or overlap with, the opponent’s cosmetics. Therefore, they are identical.

The contested Perfume is included in the broad category of the opponent’s Perfumery. Therefore, they are identical.

The contested Aromatic oils; Aromatherapy preparations are included in the broad category of, or overlap with, the opponent’s essential oils. Therefore, they are identical.

The contested Seaweed for cosmetology are at least similar to the opponent’s cosmetics. They can coincide in purpose, distribution channels and relevant public.

Contested goods in Class 5

The contested Algaecides [chemicals for swimming pool maintenance] are included in, or overlap with, the opponent’s preparations for destroying noxious animals. Therefore, they are identical.

Contested goods in Classes 6, 7, 9, 11, 19, 20, 22

The contested goods in Classes 6, 7, 9, 11, 19, 20 and 22 are dissimilar to the opponent’s goods in Classes 3 and 5. These goods differ in nature, purpose and method of use. Their producers and trade origin, distribution channels and relevant public are usually quite distinct. In relation to some of the contested goods the opponent argues that they are similar, as they are complementary.

However, the Opposition Division notes goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). In addition, complementarity is not usually conclusive on its own for finding similarity between goods. Even where a degree of complementarity exists, goods may be dissimilar. Also, complementarity has to be clearly distinguished from use in combination where goods/services are merely used together, whether by choice or convenience. This means that they are not essential for each other (decision of 16/12/2013, R 634/2013-4, ST LAB (fig.) / ST, § 20). In such cases similarity can only be found on the basis of other factors, not on complementarity.

In the present case, bearing in mind the totally different nature and usual origin of the goods, as well as the abovementioned factors (purpose, method of use, distribution channels, relevant public), even if some complementarity may exist between some of contested goods and the opponent’s goods, there is sufficient distance between them and no relevant similarity can be found.

Therefore, the compared goods are not similar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35.

Therefore, the contested retailing, online sale or wholesaling of the following goods: cosmetics, algicides are similar to a low degree to the opponent’s cosmetics and preparations for destroying noxious animals.

According to the practice of the Opposition Division, similarity between retail/wholesale services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail/wholesale services and the specific goods covered by the other mark are identical (as in the above paragraph). This condition is not fulfilled in the present case in relation to all the remaining contested retail/online sale/wholesale services, since the goods at issue are dissimilar to the opponent’s goods. Therefore, all the remaining contested retail/online sale/wholesale services of various goods (which will not be listed here due to the lengthy list) are dissimilar to all the opponent’s goods. 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.

The remaining contested services (that are not retail/wholesale/online sale-related) include different services related to advertising, business management, marketing, import-export, etc. and are dissimilar to the opponent’s goods in Classes 3 and 5. These sets of goods and services have no relevant points of contact that could justify finding a level of similarity between them. They differ in nature, purpose and method of use. They do not have the same producers/providers or distribution channels and are neither in competition, nor complementary.

b) Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar to various degrees are directed both at the public at large and at professional consumers. The degree of attention may vary from average to high, depending on the specialised nature and price of the goods/services, the frequency of purchase, or terms and conditions of the goods and services purchased.

c) The signs

Höfer Chemie
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 earlier mark is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the sign is represented in upper or lowercase characters.

The contested sign is figurative and consists of the verbal element ‘hofer’, written in stylised lowercase letters in dark red colour and a wavy black wine line below it.

The element ‘Chemie’ of the earlier mark will be understood as ‘chemistry’ by the relevant public. Bearing in mind that the relevant goods and services include chemical and/or cosmetic products or related goods/services that are normally produced by chemical plants and entities and through chemical processes, this element is of limited distinctiveness, if any.

The element ‘Höfer’ of the earlier mark (also spelled Hoefer) is a German surname, derived from Hof (yard, court). Likewise, the verbal element ‘hofer’ of the contested sign is another German surname, also having its origin from the word Hof (yard, court). As neither ‘Höfer’ nor ‘hofer’ has any descriptive, non-distinctive, allusive or otherwise weak meaning in relation to the relevant goods/services, their inherent distinctiveness is normal.

The font/stylisation of the letters as well as the colours and the wavy line in the contested sign are not particularly specific elements and will be will be seen as ornamental and/or commonplace. Therefore, they do not add any particular distinctiveness to the verbal element ‘hofer’. 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). Therefore, the word elements in the contested sign are, in principle, more important than the figurative elements.

The signs have no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s).

Visually, the signs coincide nearly in full in their inherently distinctive elements ‘Höfer’ and ‘hofer’, representing the first verbal element of the earlier mark and the only verbal element of the contested sign. The signs differ in the umlaut (the two dots) and in the second verbal element of the earlier mark, as well as in the above-described figurative elements of the contested sign. However, these differences are not of significant impact because the umlaut is sometimes chopped off in writing (e.g. when using different keypads or keyboards) or can hardly be discerned depending on the type of font used, and the distinctiveness of ‘chemie’ is limited, if any. Also, as mentioned, the figurative elements are hardly distinctive. The fact that the signs nearly coincide in an inherently distinctive element appearing in their beginning is of particular relevance. This is because 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.

Therefore, bearing in mind the aforementioned, as well as the certain visual differences and their respective weight, it is considered that the signs are visually similar to a lower than average degree.

Similar consideration apply to the aural comparison. The signs coincide nearly in full in their distinctive elements: the difference in the sound of /ö/ versus /o/ is not very strong in the flow of speech and the impact of the difference due to ‘chemie’ is very reduced due to its limited distinctiveness. Therefore, bearing in mind all the above-mentioned similarities and differences and their respective weight, it is considered that the signs are aurally similar to at least an average degree.

Conceptually, as mentioned above the inherently distinctive elements Höfer’ and ‘hofer’ of the signs both refer to German surnames, albeit different ones. The earlier mark will be associated with a concept on account of ‘chemie’, which however is hardly distinctive and its conceptual impact would be limited, if any. Therefore, in the strict sense, since the signs refer to different concepts, they are not conceptually similar.

Nevertheless, as mentioned above, in spite of the fact that both signs refer to different surnames, the Opposition Division considers that a certain conceptual link between the signs cannot be denied, especially bearing in mind the orthographic proximity and origin of the surnames.

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

d) Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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, despite the presence of an element with a limited, if any, distinctiveness in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The contested goods and services are partly identical and similar to various degrees and partly dissimilar to the opponent’s goods. The relevant goods and services are directed at the public at large and at professionals and the degree of attention may vary from average to high. The earlier mark has a normal degree of inherent distinctiveness.

The signs are visually similar to a lower than average degree and aurally, they are similar to at least an average degree. They are conceptually not similar. However, although they refer to different German surnames, these have the same root. In addition, the umlaut can easily be overlooked, or, depending on the font used, the two dots can sometimes be hardly seen.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, 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).

In view of the foregoing and taking into account all the relevant circumstances of the case, also the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes that the degree of similarity between the signs is sufficient to induce a likelihood of confusion on the part of the relevant public in connection with identical and similar goods, including to a low degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 30 201 2008 732. It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade mark.

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

The examination will now proceed (in relation to the remaining dissimilar goods and services) on the basis of the rights invoked under Article 8(4) EUTMR.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

I. Signs used in the course of trade – Austria, Belgium, France, the Netherlands

The Opposition Division will first examine the opposition in relation to the opponent’s domain names: hoefer-shop.fr, hoefer-shop.be, hoefer-shop.at and hoefer-shop.nl, used in the course of trade in, respectively, France, Belgium, Austria and the Netherlands and the domain name hoefer-chemie.com used in the course of trade in Austria, Belgium, France and the Netherlands.

The rights under the applicable law

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade signs invoked, namely the domain names hoefer-shop.fr, hoefer-shop.be, hoefer-shop.at and hoefer-shop.nl, hoefer-chemie.com, used in the course of trade in France, Belgium, Austria and the Netherlands. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent. The opponent did not submit any information, argumentation, jurisprudence and/or evidence of fulfilment of the conditions of acquisition and of the scope of protection of the rights invoked. It did not submit reference and the content (text) of any the applicable provisions, including in the respective original languages.

Therefore, given that at least one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition is not well founded under Article 8(4) EUTMR insofar as based on domain names: hoefer-shop.fr, hoefer-shop.be, hoefer-shop.at and hoefer-shop.nl, used in the course of trade in France, Belgium, Austria and the Netherlands and hoefer-chemie.com used in the course of trade in Austria, Belgium, France and the Netherlands.

II. Signs used in the course of trade – Germany

The Opposition Division will proceed to examine the opposition in relation to the remaining signs, namely the opponent’s company name ‘Höfer Chemie GmbH’, domain names hoefer-chemie.de, hoefer-shop.de and hoefer-chemie.com, used in the course of trade in Germany.

a) Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested trade mark was filed on 28/04/2018. Therefore, the opponent was required to prove that the signs on which the opposition is based were used in the course of trade of more than local significance in Germany prior to that date. The evidence must also show that the opponent’s signs have been used in the course of trade for

- company name ‘Höfer Chemie GmbH’ in relation to the following business activities: the manufacture and sale of chemical-technical products, in particular chemical cleaning agents; the trade in furniture of all kinds and other consumer goods for home and garden; the provision of all related services; the trade in hardware and software.

- domain names hoefer-chemie.de, hoefer-shop.de and hoefer-chemie.com in relation to: the distribution of products in the field of fuels and combustibles, pool maintenance, pools and spas, technical chemicals, home and garden.

On 24/04/2019 the opponent filed the following evidence:

- Enclosure 2: Extract of the German Commercial Register of Saarbrücken Local Court for the company name ‘Höfer Chemie GmbH’ and an English translation.

- Enclosure 5: Affidavit of the Managing Director of the company ‘Höfer Chemie GmbH’, Mr. Olivier Höfer, dated 16/04/2019. It is mentioned that the main business fields of ‘Höfer Chemie GmbH’ are fuel, swimming pool maintenance products, swimming pools and accessories as well as technical chemicals and that the list of clients of ‘Höfer Chemie GmbH’ comprises about one million active clients, both private and commercial. The affidavit mentions the company’s turnover for the year 2017 and it is also mentioned that ‘Hofer Chemie GmbH’ sells its goods via its online shops at, amongst others, www.hoefer-chemie.de, www.hoefer-chemie.com and www.hoefer-shop.de. The affidavit refers to the samples of debit notes and website traffic analytics (listed below) and includes a table with advertising costs charged to the opponent by Google.

- Enclosure 5: Google Analytics for the exemplary periods 29/06/2015 -27/07/2015, 27/06/2016 - 27/07/2016 and 27/06/2017 - 27/07/2017 showing pageview statistics. Eight invoices issued to the opponent’s company by Google in May, June, July and August 2016 and in May, June, July and August 2017 in relation to advertising costs for adwords.

- Enclosure 5.1: Twenty-seven invoices related to ‘chemical products’, addressed to entities in Germany, Netherlands, France, Austria, Slovakia, Hungary and Belgium. Only part of the invoices, namely thirteen of the invoices are relevant, as they are addressed to clients in the relevant territory Germany. The relevant invoices are dated in 2012, 2013 and 2014 and itemize various chemical products, such as algae destroyer, bioflock liquid, chlorine liquid/granulate/slowly soluble, basic cleaner, flocculate cartridges, multitabs, isopropanol, pH reducer liquid, refill kit test basic (one invoice) and lamp oil (one invoice).

- Enclosure 5.2: Three invoices dated in 2014, 2015 and 2017 addressed to clients in Germany. The invoices itemize mostly fragrances (9 units) and also isopropanol (1 unit) and bio ethanol (less than 5 units).

- Enclosure 5.3: Two invoices dated in 2017 addressed to clients in Germany. The invoices itemize one sand filter pump each, as well as flocculate cartridge (2 items), chlorine (1 unit) and pH granulate (1 unit).

- Enclosure 5.4: Five invoices, of which only three invoices are addressed to clients in Germany. The relevant invoices are dated in 2013, 2014 and 2015 ant itemize the following: scuba pool tester (1 unit), GoTest photometer (1 unit), refill set Scuba II (1 unit), test strip (1 unit) as well as small quantities (8 units altogether) of alga destroyer, pH lifter liquid, pH reducer liquid, multitabs, flocculants liquid.

- Enclosure 5.5: Four invoices dated in 2017 addressed to clients in Germany. The invoices itemize pool tarpaulins (2 units), bottom net (2 units) as well as several items of goods identified as ‘Fast set pool’, ‘Frame pool set’, ‘starter kit’ and ‘telescopic rod’.

- Enclosure 5.6: One invoice addressed to a client in Germany dated in 2017 itemizing the sale of one sand filter pump, one pool heater and one tarpaulin.

- Enclosure 6: Printout of 17/04/2019 from www.hoefer-shop.de/impressum showing the name, registration data and address details of the opponent’s company.

- Enclosure 11: Extract from Whois database showing the domain name registration details for hoefer-chemie.com registered on 20/10/2003 in the name of the opponent’s company.

- Enclosure 12: Extract from ‘denic’ registrar showing the domain name registration details for hoefer-chemie.de.

- Enclosure 13: Extract from ‘denic’ registrar showing the domain name registration details for hoefer-shop.de.

- Enclosure 14: Screenshots (undated) from, inter alia, hoefer-chemie.de and hoefer-shop.de showing information about the company and products, including pictures and prices of several goods.

- Enclosure 15: Traffic analytics dated March 2019 showing market share and traffic ranking for several websites, inter alia, hoefer-chemie.de and hoefer-shop.de.

Assessment of the evidence

Having examined the evidence, the Opposition Division notes that the evidence does not provide a convincing picture of the use of the opponent’s signs in the course of trade in Germany at the time of the filing of the contested trade mark (28/04/2018).

In its affidavit the opponent states that its company’s main business fields are manufacturing and/or selling of fuel, swimming pool maintenance products, swimming pools and accessories as well as technical chemicals. These business fields are quite diverse. The opponent mentions that the list of its active clients is more than a million and the quoted turnover figure for 2017 is significant. However, the invoices and the remaining documents accompanying the affidavit do not sufficiently corroborate this information and the economic extent of use.

As far as the Affidavit is concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. Since the present case concerns use of a non-registered trade mark or another sign used in the course of trade, these principles can be applied by analogy. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the statements are sufficiently supported by the other items of evidence.

Indeed, the evidence, in particular the invoices, suggests that some use of the signs has been made. However, on the basis of the evidence filed, the Opposition Division is not able to appreciate whether the economic extent of use is sufficient in relation to the respective goods/business activities.

As regards the invoices, these are spread in the period 2012 – 2017 (with the exception of 2016). However, they itemise very different goods, in varying quantities, and it is difficult to determine the intensity and volume of use in relation to the specific types of goods.

As regards Enclosure 5.1, it consists of 13 invoices itemising almost exclusively chemical products belonging to Class 1 (chlorine, isopropanol, pH reducer liquid, flocculate, pH regulating liquids/granulate) and algicides belonging to Class 5 (algae destroyer). A close analysis of these invoices shows, however, that important quantities of chemical/algicide goods were billed only in 2014, while the quantities of chemical goods and algicides exemplified in the remaining periods (2012 and 2013), including through the remaining invoices that additionally refer to 2015 and 2017 (Enclosures 5.2 to 5.6), are rather insignificant bearing in mind the size of the market in Germany. Therefore, in the absence of additional information/documents showing, either directly or indirectly, sufficient economic extent of use also in other periods (other than 2014), the Opposition Division cannot conclude that the opponent used in the course of trade the signs in relation to chemical products in Class 1 and algicides in Class 5 to a more than mere local significance. The opponent did not file any information in relation to advertising of the goods, product catalogues, price lists or sales figures. In fact, aside from a couple of undated screenshots (Enclosure 14), the opponent did not file any document showing the goods themselves, their specific characteristics, intended use and/or composition.

The Opposition Division is unable to establish the exact nature of a number of the goods itemised in the invoices filed, namely: refill kit test basic, bioflock liquid, basic cleaner, multitabs, refill kit test basic, scuba pool tester, refill set Scuba II, poolable, test strip, Fast set pool, Frame pool set, starter kit, telescopic rod. Consequently, the sales relating to these goods cannot be appreciated and cannot be taken into account.

In addition, as regards the invoices filed as Enclosures 5.2 to 5.6 (in total 13 invoices referring to 2014, 2015 and 2017), these show the sale of very small quantities (between 1 to 9 units altogether) of diverse goods, such as: fragrances (in Class 3), sand filter pump and pool heater (Class 11), bio ethanol (Class 4), photometer (Class 9), pool tarpaulins, bottom net (Class 22). It is obvious that the sale of less than 10 units of these goods in the mentioned time periods (covering several years) in a territory with the size of Germany, does not provide a convincing picture of use in the course of trade of more than local significance. Also, none of the items of evidence refers to sales of goods in 2018, i.e. stretching to a time period up to the date of filing of the contested mark.

In relation to Enclosure 5, it provides some information that the opponent advertised its websites and that these received visits. However, the opponent failed to provide any information, dated before the relevant date, showing the contents of these websites. As mentioned by the opponent, it provides a wide variety of goods and it cannot be determined which goods were sold/offered through these websites, to how many customers and to what volume/extent.

In relation to the economic extent of use, an overall assessment has to made and the opponent has to provide sufficient information concerning the commercial volume of use, the length of time of use and the frequency of use.

Having examined all the items of evidence in combination with each other, the Opposition Division concludes that it is not sufficient demonstrate that the signs were used in a sufficiently significant manner in the course of trade in the relevant territory.

The statements in the affidavit in relation to the size of the opponent’s market and activities are not properly supported by the evidence filed. The Opposition Division is aware that the invoices provided by the opponent are merely exemplary. Nevertheless, apart from a given period in 2014, in which the opponent showed extensive use in relation to some goods (chemicals and algicides), the quantities, volume, intensity and length of use shown in the remaining invoices and items of evidence are not convincing.

The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say, of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (24/03/2009, T-318/06 to T-321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

Therefore, the Opposition Division concludes that while the evidence suggests that some use of the signs have been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR. It is not apparent from the evidence that the significance of the sign relied on in the present case is more than merely local within the meaning of Article 8(4) EUTMR. The economic dimension of the use demonstrated by the evidence is insufficient.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Considering all the above, it is concluded that the evidence submitted by the opponent is insufficient to prove that the earlier signs were used in the course of trade of more than local significance in connection with the goods and services on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as based on company name ‘Höfer Chemie GmbH’, domain names hoefer-chemie.de, hoefer-shop.de and hoefer-chemie.com, used in the course of trade in Germany.

Therefore, the opposition is rejected in its entirety insofar as based on Article 8(4) EUTMR.

COSTS

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

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

The Opposition Division

Jakub MROZOWSKI

Liliya YORDANOVA

Gueorgui IVANOV

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.