OPPOSITION No B 3 111 205

Galeria Karstadt Kaufhof GmbH, Theodor-Althoff-Str. 2, 45133 Essen, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 Munich, Germany (professional representative)

a g a i n s t

Jacek Pawlicki F.H.U. „Pawlicki’, Ul. Częstochowska 59, 98-320 Osjaków, Poland (applicant), represented by Tomasz, Jarosław Słowikowski, Warszawska 60a/13, 59-900 Zgorzelec, Poland (professional representative).

On 18/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 111 205 is partially upheld, namely for the following contested services:

Class 35 Import-export agencies, commercial brokerage for national and international businesses; sale in shopping centres, shops and/or wholesale outlets, through agents and via a website, of the following goods: general foodstuffs, meat and meat products, charcuterie, fish, crustaceans and molluscs, agricultural, horticultural and forestry products, fruit and confectionery, fruit and vegetable preserves, bakery goods, confectionery and sweets, ice cream, milk and milk products, flour, products based on flour and preparations made from cereals, groats, pasta, eggs, edible oils and fats, non-alcoholic and alcoholic beverages, tea, coffee, cocoa, herbs and condiments, soups, tobacco products, newspapers and printed publications, school supplies, cosmetics, toiletries and household chemicals, utensils for household purposes, furniture, building materials, telecommunications equipment, electronic household appliances and computer hardware, radios, televisions and household appliances, motor vehicle parts and fittings, pharmaceutical products, sports equipment, clothing and footwear, jewellery; sales promotion for others; marketing and presentation of goods and services; advertising and promotion, direct mail advertising; organisation of shows, trade fairs and exhibitions for commercial or advertising purposes.

Class 43 Hotel services relating to reservations, temporary accommodation and catering in hotels, motels, holiday homes and tourist homes; food and drink catering relating to the serving of meals and beverages in bars, cafeterias, cafés, inns, restaurants and canteens; preparation and delivery of food to order (catering); conducting of promotional events, parties, banquets, entertainment, balls, for others, relating to providing food and drink; rental of meeting rooms equipped with audiovisual and telematic apparatus, namely telefax machines, computers and the internet.

2. European Union trade mark application No 18 103 400 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

On 11/02/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 103 400 (figurative mark). The opposition is based on European Union trade mark registration No 18 046 389 (figurative mark). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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

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

a) The goods and services

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

Class 9: Recorded content; software; downloadable applications for mobile devices; mobile apps; parts and accessories for all the aforesaid goods, included in this class.

Class 35: Retail services, mail order sale services, wholesaling services, e-commerce in relation to chemicals for use in industry, science and photography, as well as in agricultural, horticulture and forestry, paints and lacquers, preservatives against rust and against deterioration of wood, washing preparations, detergent, abrasive preparations, toiletries, animal care products, essential oils and aromatic extracts, abrasive preparations, cleaning and fragrancing preparations, furbishing preparations, soap, perfumery, dentifrices, cosmetics, make-up, makeup, lipstick, nail varnish, hair care products, cosmetic bags, attaché cases, pharmacy articles, fuels and illuminants, candles, wicks, pharmaceutical drugs, materials for dressings, disinfectants, dietetic preparations and nutritional supplements, sanitary preparations and/or articles, medical and veterinary preparations and articles, food for babies, building materials of metal, metal cables and wires (not for electrical purposes), ironmongery and small items of metal hardware, safes, moneyboxes, baskets of metal, works of art of metal, sculptures of metal, cans of metal, robotic apparatus, machines and machine tools for the treatment of materials and manufacturing, sweeping, cleaning and washing machines, hand tools (other than hand-operated), coffee grinders, other than hand operated, electric glue gun, electric kitchen machines, waste disposers (machines), sewing machines, pepper mills, other than hand-operated, stirring machines, saw machines, cutting machines, vacum cleaners, bags for vacuum cleaners, vacuum cleaner hoses, washing machine, hygienic and beauty implements for humans and animals, tools for preparing foodstuffs, kitchen knives and cutlery, hand-operated devices and tools for treatment of materials, and building construction, repair and maintenance work, gardening tools, scissors, knives, forks and spoons, shaving equipment, recorded data, audio-visual and information technology equipment, apparatus, instruments and cables for electricity, optical equipment and apparatus, amplifiers and emphasisers, security, safety, protective and signalling apparatus and equipment, navigation, guidance, tracking, targeting and map-making devices, detecting and monitoring instruments, indicators and controllers, electrical and electronic apparatus, amusement apparatus, cameras, spectacles, eyeglass cases, spectacle accessories, contact lenses and contact lens accessories, computers, software, computer accessories, telephones, memory carriers, blank and pre-recorded CDs, DVDs, mobile telephone accessories, electric batteries, fire extinguishers, feeding aids and dummies, medical and veterinary apparatus and instruments, orthopaedic and mobility aids, contraceptive products, bulbs, domestic electrical appliances, lighting devices, lamps, vehicles, apparatus for locomotion by land, air or water, bicycles, vehicle accessories, drones, fireworks, clocks, watch fittings, alarm watches, cuff links (jewellery), keyrings and key chains, jewellery boxes and watch boxes, musical instruments, books and journals, newspapers, printed matter and stationery, scissors, office supplies, materials for packaging, instructional and teaching material, adhesives for stationery, artists’ materials, paint brushes, works of art and sculptures made from paper and cardboard, materials and equipment for decorations and artists, bags, pouches and goods of paper for packaging, wrapping and storage, wrapping and storage, paper and cardboard, photo albums, leather goods, walking sticks, umbrellas and parasols, animal coats, luggage, bags, wallets and other containers, suit cases, key cases, purses, document files, rucksacks, satchels, furniture and furnishings, mirrors (looking glasses), dustbins, dishwashing brushes, cinder sifters (household utensils), oyster openers, oyster shells, bowls (basins), basins (receptacles), reservoirs, not of metal nor of masonry, containers for household or kitchen use, cabinets for stationery [office requisites], closures, not of metal, for containers, beer mugs, cloths for washing floors, scrubbing brushes, candy boxes, bulb basters, skillets, cooking skewers, bread-making machines, bread-making machines, bread boards, bread bins, bread baskets, toasters, bread-cutting machines, ironing boards, irons, flat-iron stands, ironing machines, brushes (parts of machines), lamp-glass brushes, brushes for vacuum cleaners, brush mountings, brush-making materials, brush goods, butter dishes, butter dish covers, skins of chamois for cleaning, closures for pot lids, decorations of plastic for foodstuffs, decorative magnets, disinfectant apparatus, disinfectants, disinfectants for hygiene purposes, disinfectant dispensers for toilets, disinfectant soap, deodorising apparatus for personal use, deodorising apparatus, not for personal use, boxes of precious metal, boxes of leather or leather board, boxes of common metal, cases, cases of wood or plastic, box fasteners of metal, dosing equipment, egg cups, net shopping bags and shopping bags, glass jars (carboys), disposable plates, machines and apparatus for wax-polishing (electric), electric brushes, except parts of machines, pressure cookers (autoclaves), electric, electric steam cookers, electrical can openers, deep fryers, electric, electric fruit squeezers for household purposes, electric apparatus for preparing yoghurt, electric coffee makers, electric combs, electric glue gun, electric cooking utensils, electric testing apparatus, electric kitchen machines, electric lamps, fans (electric -) for personal use, electric manicure sets, scissors, electric, electric knives, electric measuring devices, electric food blenders for domestic use, grinders, electric, for kitchen use, nail files (electric), electric nail extractors, parquet wax-polishers, electric, electric cleaning installations (polishing), beaters, electric, shears, electric, electric whisks for household purposes, pressure cooking saucepans, electric, electric shoe polishers, tortilla presses, electric, bottle openers, electric and non-electric, electric food processors, electric waffle irons, laundry dryers (electric), electric kettles, electric toothbrushes, electric kitchen grinders/crushers, cruets, cruet sets for oil and vinegar, chop sticks, mousetraps, chamois leather for cleaning, sash fasteners of metal for windows, sash fasteners, not of metal, for windows, window fasteners, not of metal, dripping pans, strainers for household purposes, bottles, bottle envelopes of cardboard or paper, metal bottle caps, bottle caps, not of metal, bottle racks, corks for bottles, bottle casings of wood, bottle wrappers of cardboard or paper, bottle envelopes of straw, metal closures for bottles, bottle closures, not of metal, chopping blocks (tables), meat mincers (machines), mincing knives (hand tools), fly traps, fly catching paper, fly swatters, moulds (kitchen utensils), ice cube molds [moulds], table forks, hooks of metal for clothes rails, coathooks, not of metal, curtain hooks, curtains of textile material, curtain holders, not of textile, curtain rings, curtain rollers, curtain rods, containers for household or kitchen use, apparatus for aerating beverages, apparatus for aerating water, cruet sets, watering cans, ladles, spouts, glass flasks (containers), glass receptacles, glass cloth, glass balls, roasting apparatus, rotisseries, BBQ mitts, grills (cooking utensils), roasting spit, grill supports, rubber suction cups for cleaning drains, hand tools (hand-operated), noodle machines, hand-operated, hand-operated cleaning implements, shearers (hand instruments), abrading instruments (hand instruments), hand-operated coffee grinders, mills for domestic purposes, hand-operated, pepper mills, hand-operated, towel dispensers, not of metal, fixed, towel stands (furniture), home appliances, gloves for household purposes, heat-insulated containers, insulating flasks, heat-insulated containers for beverages, heat-insulated containers for foodstuffs, cabarets (trays), coffee filters of paper, coffee roasters, coffee services (tableware), tar-brushes, long handled, comb cases, jugs, decanters, coasters [table linen], coasters of paper, cheese-dish covers, boxes of precious metals, cases,of leather or leatherboard, boxes of common metal, boxes of vulcanised fibre, boxes of metal, chests, not of metal, household ceramics, candle extinguishers, candle jars (holders), candle holders for Christmas trees, candelabras, candle rings, clothes hooks, not of metal, clothes hooks of metal, coatstands, cooking apparatus and installations, bags for microwave cooking, kilns, moulds (kitchen utensils), cooking pot sets, mess-tins, cauldrons, saucepans, bake ware, preserving boxes of metal, baskets of metal, baskets, for domestic use, baskets, not of metal, demijohns, wickerwork, corks, tie presses, crystal [glassware], cake tins, kitchen jars, kitchen tools, kitchenware, cake brushes, kitchen roll dispensers, refrigerators, bottles (refrigerating), refrigeration cabinets, cool bags, candlesticks, edible pastes making machines, sausage making machines, knife rests for the table, measuring devices, graduated glassware, meters and gauges, shakers, mixers (machines), non-electric dusting apparatus, heaters for feeding bottles (non-electric), food steamers, non-electric, hot pots, not electrically heated, non-electric tin openers, non-electric egg slicers, irons (non-electric hand tools), fans for personal use, nonelectric, non-electric deep fryers, non-electric fruit presses for household purposes, coffee filtering apparatus (non-electric), coffee pots (non-electric), coffee percolators, non-electric, non-electric cheese slicers, non-electric blenders for household purposes, kitchen grinders, non-electric, apparatus for wax-polishing, non-electric, pizza cutters, non-electric, polishing apparatus and machines, for household purposes, non-electric, non-electric mixers, whisks, non-electric, for household purposes, autoclaves (pressure cookers), non-electric, shoe polishers (non- electric -), non-electric tortilla presses, portable cool boxes, non-electric / portable coolers, non-electric, non-electric waffle irons, nonelectric kettles, non-electric crushers in the kitchen, hand tools (other than hand-operated), coffee grinders, other than hand-operated, mills for household purposes (other than hand-operated), pepper mills, other than hand-operated, nut crackers, oven mitts, paper and plastic cups, boxes for dispensing paper towels, waste paper baskets, pepper pots, plates to prevent milk boiling over, cookie (biscuit) cutters, polishing gloves, polishing leathers, polishing materials for making shiny, except preparations, paper and stone, lunch boxes, cosmetic compacts, mop wringer buckets, scouring pads, rags for cleaning, wool waste for cleaning, shaving brushes, stands for shaving brushes, rat traps, perfume burners, smoke absorbers for household purposes, graters for kitchen use, cleaning cloths, stirring spoons (kitchen implements), cocktail stirrers, salt cellars, salinometers, scrapers (kitchen implements), brushes for cleaning tanks and containers, bowels, scoops (tableware), scouring pads of metal, scouring pads for kitchen purposes, signs of porcelain or glass, cutting boards for kitchen use, shoe horns, shoe brushes, covers for dishes, bowls, trivets (table utensils), sponge holder, earthenware saucepans, soap boxes, soap holders, dispensers for soap, sieves (household utensils), lazy susans, napkin holders, napkin rings, strainers, sifters (household utensils), siphon bottles for carbonated water, money boxes, vessels of metal for making ices and iced drinks, menu card holders, piping bags, towel rails and rings, dusting cloths, feather-dusters, buckets made of woven fabrics, currycombs, soup bowls, household trays, trays for domestic purposes, of paper, centrepieces, services (dishes), hip-flasks, cups, tea caddies, tea infusers, teapots, tea cosies, tea services (tableware), tea strainers, pastry cutters, rolling pins (domestic), plates, carpet sweepers, carpet beaters (hand instruments), combs for animals, crumb trays, toilet utensils, toilet cases, toilet paper holders, toilet paper dispensers, oven mitts, pot holders, tart scoops, baby baths (portable), drinking troughs, cages for household pets, funnels, drinking bottles for sports, drinkware, drinking glasses, drinking straws, drinking horns, tankards, feeding troughs, ironing board covers [shaped], bird baths, birdcages, weighing scales, washing boards, clothespegs, clothes horses, washtubs, disposable plates, wine tasters (siphons), mop wringers, dental floss, dental sticks, toothpick holder, indoor aquaria, indoor terrariums (plant cultivation), indoor terrariums (vivariums), sugar bowls, objects d’art, decorative articles, food storage boxes, coathangers, crockery, glasses, pots, glassware, porcelain, brushes, combs and spongers, statues, figurines, signs and works of art, gardening articles, brushes, paint brushes and brooms, tableware, cooking pot sets and containers, cleaning implements and articles, cosmetic and toilet utensils, and bathroom articles, boot jacks, shoehorn, clothes stands, shoe trees and stretchers, shoe care products, ropes and cables, nets, yarns, threads, cloths, textile goods, and substitutes for textiles, bed covers and table covers, hand towels, table blankets, articles of clothing, footwear and headgear, gloves, belts, clothing accessories, heel cushions, functional clothing, bath linen, sports clothing and footwear, neckties, scarves, inner soles, sewing materials and decorative textile articles, hair ornaments, curlers, hair fastening apparatus, haberdashery, buttons, needles, rugs, carpets, mats, floorcoverings for existing floors, wall and ceiling coverings, games and playthings, playing cards, curios, playground apparatus, articles for party decorations and artificial Christmas trees, sports goods and equipment, novelties for parties, Christmas tree candles, outdoor goods, camping articles, foodstuffs, agricultural, horticultural and forestry products, fruit and vegetables, foodstuffs and fodder for animals, products for animal litter, beers and brewery products, non-alcoholic drinks, preparation for making herbs, alcoholic preparations for making beverages, alcoholic beverages, cigarettes, tobacco, smoker’s articles and matches, tobacco products, evaporators for personal use and electronic cigarettes, and flavourings and solutions therefor, advertising, marketing and promotion services; business assistance; business management and administrative services; business analysis, research and information services; provision of on-line business and commercial information; providing business information via a website; auctioneering services; brokerage, collective buying, commercial evaluation, arranging of competitions, ordering, price comparison services, procurement services for others, subscriptions, franchising, namely commercial or industrial business administration or management assistance, providing of an online marketplace for buyers and sellers of goods and services, computerised ordering of stock, negotiation and billing of commercial transactions, for others, arranging and concluding of commercial transactions, for others, services in relation to customer loyalty programmes and incentive and bonus schemes, trade fairs and exhibitions, marketing in relation to search engines, internet advertising, optimisation of website traffic, optimisation of search engines, pay-per-click advertising, online advertising; business management; business administration; office functions.

Class 43: Providing temporary accommodation; animal boarding; rental of furniture, linens and table settings; providing food and drink; rental of objects in connection with the providing of the aforesaid services, included in this class; consultancy and information in relation to the aforesaid services, included in this class.

The contested services are the following:

Class 35: Import-export agencies, commercial brokerage for national and international businesses; sale in shopping centres, shops and/or wholesale outlets, through agents and via a website, of the following goods: general foodstuffs, meat and meat products, charcuterie, fish, crustaceans and molluscs, agricultural, horticultural and forestry products, fruit and confectionery, fruit and vegetable preserves, bakery goods, confectionery and sweets, ice cream, milk and milk products, flour, products based on flour and preparations made from cereals, groats, pasta, eggs, edible oils and fats, non-alcoholic and alcoholic beverages, tea, coffee, cocoa, herbs and condiments, soups, tobacco products, newspapers and printed publications, school supplies, cosmetics, toiletries and household chemicals, utensils for household purposes, furniture, building materials, telecommunications equipment, electronic household appliances and computer hardware, radios, televisions and household appliances, motor vehicle parts and fittings, pharmaceutical products, sports equipment, clothing and footwear, jewellery; sales promotion for others; marketing and presentation of goods and services; advertising and promotion, direct mail advertising; organisation of shows, trade fairs and exhibitions for commercial or advertising purposes.

Class 36: Real estate agency services; real estate appraisal, real estate administration, real estate management, purchase, sale, leasing and rental of real estate, rental of offices and commercial premises, brokerage relating to real estate, flats, plots and business and commercial premises, including purchase and sale, exchange and rental of real estate; real estate consultancy; capital investment in the field of real estate.

Class 37: Comprehensive servicing of cars and motorcycles, namely vehicle repair, maintenance, cleaning, greasing and polishing, oil change; upholstery repair, workshop and painting services; tyre servicing, including changing, repairing and vulcanisation of tyres, balancing vehicle wheels; vehicle wash.

Class 43: Hotel services relating to reservations, temporary accommodation and catering in hotels, motels, holiday homes and tourist homes; food and drink catering relating to the serving of meals and beverages in bars, cafeterias, cafés, inns, restaurants and canteens; preparation and delivery of food to order (catering); conducting of promotional events, parties, banquets, entertainment, balls, for others, relating to providing food and drink; rental of meeting rooms equipped with audiovisual and telematic apparatus, namely telefax machines, computers and the internet.

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

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

However, the term ‘namely’, used in both lists 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.

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 services in Class 35

The contested commercial brokerage for national and international businesses are included in the broad category of the opponent’s brokerage. Therefore, they are identical.

The contested sale in shopping centres, shops and/or wholesale outlets, through agents and via a website, of the following goods: general foodstuffs, meat and meat products, charcuterie, fish, crustaceans and molluscs, agricultural, horticultural and forestry products, fruit and vegetables, fruit and vegetable preserves, bakery goods, confectionery and sweets, ice cream, milk and milk products, flour, products based on flour and preparations made from cereals, groats, pasta, eggs, edible oils and fats, non-alcoholic and alcoholic beverages, tea, coffee, cocoa, herbs and condiments, soups, tobacco products, newspapers and printed publications, school supplies, cosmetics, toiletries and household chemicals, utensils for household purposes, furniture, building materials, telecommunications equipment, electronic household appliances and computer hardware, radios, televisions and household appliances, pharmaceutical products, sports equipment, clothing and footwear, jewellery are identical to the opponent’s retail services, wholesaling services, e-commerce in relation to abrasive preparations, toiletries, cosmetics, pharmaceutical drugs, building materials of metal, cleaning and washing machines, audio-visual and information technology equipment, electronic apparatus, computers, telephones, cuff links (jewellery), newspapers, printed matter office supplies, furniture; cinder sifters (household utensils), articles of clothing, footwear, sports goods and equipment, foodstuffs, agricultural, horticultural and forestry products, fruit and vegetables, foodstuffs, non-alcoholic drinks, preparation for making herbs, alcoholic beverages, tobacco products either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

The contested marketing; advertising and promotion are identically contained in both lists of services (including synonyms).

The contested sales promotion for others; and presentation of goods and services; direct mail advertising are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested organisation of shows, trade fairs and exhibitions for commercial or advertising purposes are included in the broad category of, or overlap with, the opponent’s trade fairs and exhibitions. Therefore, they are identical.

The contested import-export agencies are similar to the opponent’s business management as they usually coincide in producer, relevant public and distribution channels.

The contested sale in shopping centres, shops and/or wholesale outlets, through agents and via a website, of the following goods: motor vehicle parts and fittings are similar to a low degree to the opponent’s providing of an online marketplace for buyers and sellers of goods and services in Class 35 as they have the same purpose. Moreover, they usually coincide in their relevant public.

Contested services in Classes 36 and 37

The contested services in Classes 36 and 37 are dissimilar to all the opponent’s goods and services in Classes 9, 35 and 43, since they have nothing relevant in common that could justify finding a level of similarity between them. The goods and services at issue are usually offered by specialised companies in their corresponding fields. These contested services and the opponent’s goods and services do not usually stem from the same origin. Furthermore, they satisfy different needs and normally target different consumers.

Contested services in Class 43

The contested hotel services relating to reservations, temporary accommodation in hotels, motels, holiday homes and tourist homes are included in the broad category of the opponent’s providing temporary accommodation. Therefore, they are identical.

The contested hotel services relating to catering in hotels, motels, holiday homes and tourist homes; food and drink catering relating to the serving of meals and beverages in bars, cafeterias, cafés, inns, restaurants and canteens; preparation and delivery of food to order (catering); conducting of promotional events, parties, banquets, entertainment, balls, for others, relating to providing food and drink are included in, or overlap with, the broad category of the opponent’s providing food and drink. Therefore, they are identical.

The contested rental of meeting rooms equipped with audiovisual and telematic apparatus, namely telefax machines, computers and the internet are similar to the opponent’s rental of objects in connection with the providing of the aforesaid services, included in this class [providing temporary accommodation; animal boarding; rental of furniture, linens and table settings; providing food and drink] as they have the same nature. Furthermore, they may coincide in provider, relevant public and distribution channels.

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 varying degrees are directed at the public at large, for example hotel services relating to reservations, temporary accommodation in hotels, motels, holiday homes and tourist homes in Class 43, and at business customers with specific professional knowledge or expertise, for example marketing; advertising and promotion in Class 35.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

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

The coinciding verbal element ‘GALERIA’ will be perceived and understood as, inter alia, ‘a room for the display or sale of works of art’, ‘a balcony or upper floor inside a hall’, ‘an underground passage’ or a ‘long room or passageway’, either because this word exists as such in some languages (e.g. Portuguese, Spanish) or because of its considerable similarity to the corresponding word in other relevant languages (e.g. ‘galerie’ in Czech, Dutch, French, German and Romanian; ‘galleri’ in Danish and Swedish; ‘gallery’ in English; ‘galleria’ in Finnish and Italian; ‘galéria’ in Hungarian and Slovak; ‘galerija’ in Lithuanian and Slovenian). In addition, part of the relevant public (e.g. the French-, Polish- and Spanish-speaking parts of the public) will also associate this verbal element with ‘a large commercial establishment where consumer goods are sold’. Therefore, for this part of the relevant public, the word ‘GALERIA’ is a weak element in relation to the majority of the relevant services in Class 35 which are closely connected to the display, marketing and retail of consumer goods in such commercial establishments since this element refers to the place where the services are rendered.

The verbal element ‘ŁODYGOWA’ in the contested sign is a Polish word and is meaningless for the part of the public who do not understand Polish or perceive a meaning therein owing to close equivalents in their own languages. Therefore, it is distinctive.

Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-Polish-speaking part of the public for whom the verbal element ‘GALERIA’ will not be associated with a meaning in relation to Class 35 as explained above and for whom the verbal element ‘ŁODYGOWA’ is meaningless. Therefore, both verbal elements are distinctive in relation to all the goods and services at issue. As this is the perspective from which the likelihood of confusion between the signs is most likely, the examination will proceed on this basis.

The earlier mark’s figurative element of three strokes forming a kind of arch is a fanciful device without any meaning in relation to the relevant services. Therefore, it is distinctive.

The contested sign is composed of distinctive verbal elements and a green stroke in the letter ‘L’. For the public under analysis, who will not perceive the letter ‘L’ and its stroke as the Polish letter ‘Ł’, this stroke is of a purely decorative nature.

The stylisations of the verbal elements of both signs are not of such a nature as to make the words illegible or to draw attention away from them (22/04/2009, R 252/2008‑1, THOMSON / THOMSON (fig.), § 35). Consequently, the stylisations of the verbal elements are of a rather decorative nature.

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).

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.

Visually, the signs coincide in the distinctive verbal element ‘GALERIA’ as the only verbal element in the earlier mark and the first verbal element in the contested sign. However, they differ in the verbal element ‘ŁODYGOWA’ at the end of the contested sign. The marks also differ in the distinctive figurative element of the earlier mark, as well as in the contested sign’s figurative element and in the typefaces and colours of both marks which are of a rather decorative nature.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛GALERIA’, present identically in both signs. The pronunciation differs in the sound of the letters ‘ŁODYGOWA’ of the contested sign, which have no counterparts in the earlier mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, to the extent that they coincide in the meaning of the verbal element ‘GALERIA’, the signs are conceptually similar to an average degree.

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

d) Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys reputation. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 and services in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The contested services have been found partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods and services. They target the public at large and a professional public whose level of attention will vary from average to high. The earlier mark has a normal degree of distinctiveness.

The marks are visually, aurally and conceptually similar to an average degree because the earlier mark’s only verbal element is completely included at the beginning of the contested sign. The signs differ in the verbal element ‘ŁODYGOWA’ at the end of the contested sign, as well as in figurative aspects of both signs which are merely decorative and will have less impact on the public than the verbal elements as explained above.

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 the present case, the additional verbal element ‘ŁODYGOWA’ in the contested sign may lead the public, even with a high level of attention, to consider the contested sign as a variation of the earlier mark that designates a new line of goods or services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-Polish-speaking part of the public who will not associate the verbal element ‘GALERIA’ with ‘a large commercial establishment where consumer goods are sold’ and for whom the element ‘ŁODYGOWA’ is meaningless, and for which both elements are distinctive. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to varying degrees to those of the earlier trade mark.

The opposition is also successful insofar as the services that are similar to a low degree are concerned since the significant coincidences between the marks are enough to outweigh the low similarity of those services.

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

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar to varying degrees goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

REPUTATION – ARTICLE 8(5) EUTMR

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

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

 The signs must be either identical or similar.

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

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

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

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

a) Reputation of the earlier trade mark

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

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

In the present case, the contested trade mark was filed on 03/08/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 9: Recorded content; software; downloadable applications for mobile devices; mobile apps; parts and accessories for all the aforesaid goods, included in this class.

Class 35: Retail services, mail order sale services, wholesaling services, e-commerce in relation to chemicals for use in industry, science and photography, as well as in agricultural, horticulture and forestry, paints and lacquers, preservatives against rust and against deterioration of wood, washing preparations, detergent, abrasive preparations, toiletries, animal care products, essential oils and aromatic extracts, abrasive preparations, cleaning and fragrancing preparations, furbishing preparations, soap, perfumery, dentifrices, cosmetics, make-up, makeup, lipstick, nail varnish, hair care products, cosmetic bags, attaché cases, pharmacy articles, fuels and illuminants, candles, wicks, pharmaceutical drugs, materials for dressings, disinfectants, dietetic preparations and nutritional supplements, sanitary preparations and/or articles, medical and veterinary preparations and articles, food for babies, building materials of metal, metal cables and wires (not for electrical purposes), ironmongery and small items of metal hardware, safes, moneyboxes, baskets of metal, works of art of metal, sculptures of metal, cans of metal, robotic apparatus, machines and machine tools for the treatment of materials and manufacturing, sweeping, cleaning and washing machines, hand tools (other than hand-operated), coffee grinders, other than hand operated, electric glue gun, electric kitchen machines, waste disposers (machines), sewing machines, pepper mills, other than hand-operated, stirring machines, saw machines, cutting machines, vaacum cleaners, bags for vacuum cleaners, vacuum cleaner hoses, washing machine, hygienic and beauty implements for humans and animals, tools for preparing foodstuffs, kitchen knives and cutlery, hand-operated devices and tools for treatment of materials, and building construction, repair and maintenance work, gardening tools, scissors, knives, forks and spoons, shaving equipment, recorded data, audio-visual and information technology equipment, apparatus, instruments and cables for electricity, optical equipment and apparatus, amplifiers and emphasisers, security, safety, protective and signalling apparatus and equipment, navigation, guidance, tracking, targeting and map-making devices, detecting and monitoring instruments, indicators and controllers, electrical and electronic apparatus, amusement apparatus, cameras, spectacles, eyeglass cases, spectacle accessories, contact lenses and contact lens accessories, computers, software, computer accessories, telephones, memory carriers, blank and pre-recorded CDs, DVDs, mobile telephone accessories, electric batteries, fire extinguishers, feeding aids and dummies, medical and veterinary apparatus and instruments, orthopaedic and mobility aids, contraceptive products, bulbs, domestic electrical appliances, lighting devices, lamps, vehicles, apparatus for locomotion by land, air or water, bicycles, vehicle accessories, drones, fireworks, clocks, watch fittings, alarm watches, cuff links (jewellery), keyrings and key chains, jewellery boxes and watch boxes, musical instruments, books and journals, newspapers, printed matter and stationery, scissors, office supplies, materials for packaging, instructional and teaching material, adhesives for stationery, artists’ materials, paint brushes, works of art and sculptures made from paper and cardboard, materials and equipment for decorations and artists, bags, pouches and goods of paper for packaging, wrapping and storage, wrapping and storage, paper and cardboard, photo albums, leather goods, walking sticks, umbrellas and parasols, animal coats, luggage, bags, wallets and other containers, suit cases, key cases, purses, document files, rucksacks, satchels, furniture and furnishings, mirrors (looking glasses), dustbins, dishwashing brushes, cinder sifters (household utensils), oyster openers, oyster shells, bowls (basins), basins (receptacles), reservoirs, not of metal nor of masonry, containers for household or kitchen use, cabinets for stationery [office requisites], closures, not of metal, for containers, beer mugs, cloths for washing floors, scrubbing brushes, candy boxes, bulb basters, skillets, cooking skewers, bread-making machines, bread-making machines, bread boards, bread bins, bread baskets, toasters, bread-cutting machines, ironing boards, irons, flat-iron stands, ironing machines, brushes (parts of machines), lamp-glass brushes, brushes for vacuum cleaners, brush mountings, brush-making materials, brush goods, butter dishes, butter dish covers, skins of chamois for cleaning, closures for pot lids, decorations of plastic for foodstuffs, decorative magnets, disinfectant apparatus, disinfectants, disinfectants for hygiene purposes, disinfectant dispensers for toilets, disinfectant soap, deodorising apparatus for personal use, deodorising apparatus, not for personal use, boxes of precious metal, boxes of leather or leather board, boxes of common metal, cases, cases of wood or plastic, box fasteners of metal, dosing equipment, egg cups, net shopping bags and shopping bags, glass jars (carboys), disposable plates, machines and apparatus for wax-polishing (electric), electric brushes, except parts of machines, pressure cookers (autoclaves), electric, electric steam cookers, electrical can openers, deep fryers, electric, electric fruit squeezers for household purposes, electric apparatus for preparing yoghurt, electric coffee makers, electric combs, electric glue gun, electric cooking utensils, electric testing apparatus, electric kitchen machines, electric lamps, fans (electric -) for personal use, electric manicure sets, scissors, electric, electric knives, electric measuring devices, electric food blenders for domestic use, grinders, electric, for kitchen use, nail files (electric), electric nail extractors, parquet wax-polishers, electric, electric cleaning installations (polishing), beaters, electric, shears, electric, electric whisks for household purposes, pressure cooking saucepans, electric, electric shoe polishers, tortilla presses, electric, bottle openers, electric and non-electric, electric food processors, electric waffle irons, laundry dryers (electric), electric kettles, electric toothbrushes, electric kitchen grinders/crushers, cruets, cruet sets for oil and vinegar, chop sticks, mousetraps, chamois leather for cleaning, sash fasteners of metal for windows, sash fasteners, not of metal, for windows, window fasteners, not of metal, dripping pans, strainers for household purposes, bottles, bottle envelopes of cardboard or paper, metal bottle caps, bottle caps, not of metal, bottle racks, corks for bottles, bottle casings of wood, bottle wrappers of cardboard or paper, bottle envelopes of straw, metal closures for bottles, bottle closures, not of metal, chopping blocks (tables), meat mincers (machines), mincing knives (hand tools), fly traps, fly catching paper, fly swatters, moulds (kitchen utensils), ice cube molds [moulds], table forks, hooks of metal for clothes rails, coathooks, not of metal, curtain hooks, curtains of textile material, curtain holders, not of textile, curtain rings, curtain rollers, curtain rods, containers for household or kitchen use, apparatus for aerating beverages, apparatus for aerating water, cruet sets, watering cans, ladles, spouts, glass flasks (containers), glass receptacles, glass cloth, glass balls, roasting apparatus, rotisseries, BBQ mitts, grills (cooking utensils), roasting spit, grill supports, rubber suction cups for cleaning drains, hand tools (hand-operated), noodle machines, hand-operated, hand-operated cleaning implements, shearers (hand instruments), abrading instruments (hand instruments), hand-operated coffee grinders, mills for domestic purposes, hand-operated, pepper mills, hand-operated, towel dispensers, not of metal, fixed, towel stands (furniture), home appliances, gloves for household purposes, heat-insulated containers, insulating flasks, heat-insulated containers for beverages, heat-insulated containers for foodstuffs, cabarets (trays), coffee filters of paper, coffee roasters, coffee services (tableware), tar-brushes, long handled, comb cases, jugs, decanters, coasters [table linen], coasters of paper, cheese-dish covers, boxes of precious metals, cases,of leather or leatherboard, boxes of common metal, boxes of vulcanised fibre, boxes of metal, chests, not of metal, household ceramics, candle extinguishers, candle jars (holders), candle holders for Christmas trees, candelabras, candle rings, clothes hooks, not of metal, clothes hooks of metal, coatstands, cooking apparatus and installations, bags for microwave cooking, kilns, moulds (kitchen utensils), cooking pot sets, mess-tins, cauldrons, saucepans, bake ware, preserving boxes of metal, baskets of metal, baskets, for domestic use, baskets, not of metal, demijohns, wickerwork, corks, tie presses, crystal [glassware], cake tins, kitchen jars, kitchen tools, kitchenware, cake brushes, kitchen roll dispensers, refrigerators, bottles (refrigerating), refrigeration cabinets, cool bags, candlesticks, edible pastes making machines, sausage making machines, knife rests for the table, measuring devices, graduated glassware, meters and gauges, shakers, mixers (machines), non-electric dusting apparatus, heaters for feeding bottles (non-electric), food steamers, non-electric, hot pots, not electrically heated, non-electric tin openers, non-electric egg slicers, irons (non-electric hand tools), fans for personal use, nonelectric, non-electric deep fryers, non-electric fruit presses for household purposes, coffee filtering apparatus (non-electric), coffee pots (non-electric), coffee percolators, non-electric, non-electric cheese slicers, non-electric blenders for household purposes, kitchen grinders, non-electric, apparatus for wax-polishing, non-electric, pizza cutters, non-electric, polishing apparatus and machines, for household purposes, non-electric, non-electric mixers, whisks, non-electric, for household purposes, autoclaves (pressure cookers), non-electric, shoe polishers (non- electric -), non-electric tortilla presses, portable cool boxes, non-electric / portable coolers, non-electric, non-electric waffle irons, nonelectric kettles, non-electric crushers in the kitchen, hand tools (other than hand-operated), coffee grinders, other than hand-operated, mills for household purposes (other than hand-operated), pepper mills, other than hand-operated, nut crackers, oven mitts, paper and plastic cups, boxes for dispensing paper towels, waste paper baskets, pepper pots, plates to prevent milk boiling over, cookie (biscuit) cutters, polishing gloves, polishing leathers, polishing materials for making shiny, except preparations, paper and stone, lunch boxes, cosmetic compacts, mop wringer buckets, scouring pads, rags for cleaning, wool waste for cleaning, shaving brushes, stands for shaving brushes, rat traps, perfume burners, smoke absorbers for household purposes, graters for kitchen use, cleaning cloths, stirring spoons (kitchen implements), cocktail stirrers, salt cellars, salinometers, scrapers (kitchen implements), brushes for cleaning tanks and containers, bowels, scoops (tableware), scouring pads of metal, scouring pads for kitchen purposes, signs of porcelain or glass, cutting boards for kitchen use, shoe horns, shoe brushes, covers for dishes, bowls, trivets (table utensils), sponge holder, earthenware saucepans, soap boxes, soap holders, dispensers for soap, sieves (household utensils), lazy susans, napkin holders, napkin rings, strainers, sifters (household utensils), siphon bottles for carbonated water, money boxes, vessels of metal for making ices and iced drinks, menu card holders, piping bags, towel rails and rings, dusting cloths, feather-dusters, buckets made of woven fabrics, currycombs, soup bowls, household trays, trays for domestic purposes, of paper, centrepieces, services (dishes), hip-flasks, cups, tea caddies, tea infusers, teapots, tea cosies, tea services (tableware), tea strainers, pastry cutters, rolling pins (domestic), plates, carpet sweepers, carpet beaters (hand instruments), combs for animals, crumb trays, toilet utensils, toilet cases, toilet paper holders, toilet paper dispensers, oven mitts, pot holders, tart scoops, baby baths (portable), drinking troughs, cages for household pets, funnels, drinking bottles for sports, drinkware, drinking glasses, drinking straws, drinking horns, tankards, feeding troughs, ironing board covers [shaped], bird baths, birdcages, weighing scales, washing boards, clothespegs, clothes horses, washtubs, disposable plates, wine tasters (siphons), mop wringers, dental floss, dental sticks, toothpick holder, indoor aquaria, indoor terrariums (plant cultivation), indoor terrariums (vivariums), sugar bowls, objects d’art, decorative articles, food storage boxes, coathangers, crockery, glasses, pots, glassware, porcelain, brushes, combs and spongers, statues, figurines, signs and works of art, gardening articles, brushes, paint brushes and brooms, tableware, cooking pot sets and containers, cleaning implements and articles, cosmetic and toilet utensils, and bathroom articles, boot jacks, shoehorn, clothes stands, shoe trees and stretchers, shoe care products, ropes and cables, nets, yarns, threads, cloths, textile goods, and substitutes for textiles, bed covers and table covers, hand towels, table blankets, articles of clothing, footwear and headgear, gloves, belts, clothing accessories, heel cushions, functional clothing, bath linen, sports clothing and footwear, neckties, scarves, inner soles, sewing materials and decorative textile articles, hair ornaments, curlers, hair fastening apparatus, haberdashery, buttons, needles, rugs, carpets, mats, floorcoverings for existing floors, wall and ceiling coverings, games and playthings, playing cards, curios, playground apparatus, articles for party decorations and artificial Christmas trees, sports goods and equipment, novelties for parties, Christmas tree candles, outdoor goods, camping articles, foodstuffs, agricultural, horticultural and forestry products, fruit and vegetables, foodstuffs and fodder for animals, products for animal litter, beers and brewery products, non-alcoholic drinks, preparation for making beverages, alcoholic preparations for making beverages, alcoholic beverages, cigarettes, tobacco, smoker’s articles and matches, tobacco products, evaporators for personal use and electronic cigarettes, and flavourings and solutions therefor, advertising, marketing and promotion services; business assistance; business management and administrative services; business analysis, research and information services; provision of on-line business and commercial information; providing business information via a website; auctioneering services; brokerage, collective buying, commercial evaluation, arranging of competitions, ordering, price comparison services, procurement services for others, subscriptions, franchising, namely commercial or industrial business administration or management assistance, providing of an online marketplace for buyers and sellers of goods and services, computerised ordering of stock, negotiation and billing of commercial transactions, for others, arranging and concluding of commercial transactions, for others, services in relation to customer loyalty programmes and incentive and bonus schemes, trade fairs and exhibitions, marketing in relation to search engines, internet advertising, optimisation of website traffic, optimisation of search engines, pay-per-click advertising, online advertising; business management; business administration; office functions.

Class 43: Providing temporary accommodation; animal boarding; rental of furniture, linens and table settings; providing food and drink; rental of objects in connection with the providing of the aforesaid services, included in this class; consultancy and information in relation to the aforesaid services, included in this class.

The opposition is directed against the following remaining services:

Class 36: Real estate agency services; real estate appraisal, real estate administration, real estate management, purchase, sale, leasing and rental of real estate, rental of offices and commercial premises, brokerage relating to real estate, flats, plots and business and commercial premises, including purchase and sale, exchange and rental of real estate; real estate consultancy; capital investment in the field of real estate.

Class 37: Comprehensive servicing of cars and motorcycles, namely vehicle repair, maintenance, cleaning, greasing and polishing, oil change; upholstery repair, workshop and painting services; tyre servicing, including changing, repairing and vulcanisation of tyres, balancing vehicle wheels; vehicle wash.

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

On 16/09/2020 the opponent submitted the following evidence.

 Attachment 1: extract from Wikipedia last edited on 17/07/2020 regarding the history of the opponent’s predecessor, the company Horten AG. The extract indicates that Horten AG was a German department store chain founded in 1936 which in 1988 introduced a new concept for their department stores called the ‘GALERIA’ concept. From 1994, Kaufhof took over Horten and some of its stores were renamed as ‘Galeria Kaufhof’.

 Attachment 2: extracts from the METRO GROUP website indicating that this company is one of the most important international retailing companies and that ‘Galeria Kaufhof’ is one of its sales brands with 137 locations in Belgium and Germany and EUR 3.4 billion in sales in 2012.

 Attachment 3: archived versions of the opponent’s website from 2002, 2007 and 2014 from the Internet Archive Wayback Machine in German with goods at sale and showing the signs (2002), (2007) and (2014).

 Attachment 4: screenshot of the information provided at www.statmyweb.com, regarding the website www.galeria-kaufhof.de (status on 08/03/2015).

 Attachment 5: undated document in German regarding GALERIA Kaufhof PAYBACK card.

 Attachment 6: extracts from fashion websites regarding the cooperation between Galeria Kaufhof and the German Fashion designer Wolfgang Joop dated in 2011, 2012 and 2014.

 Attachment 7: extract from HORINZONT Online dated 07/08/2015 in German regarding a marketing campaign of Galeria Kaufhof and the German fashion designer Wolfgang Joop.

 Attachment 8: advertising leaflets in German for a variety of foodstuffs, dated in 2015 without any reference to the earlier mark.

 Attachment 9: press article from Ähnliche News dated 27/07/2016 regarding sponsorship of Galeria Kaufhof with German Football Bundesliga Team 1. FC Cologne.

 Attachment 10: extract of a survey conducted by the German market research institute Ipsos GmbH from 06/04/2004 to 13/04/2004, as regards whether the end consumer is familiar with the name ‘GALERIA’ in connection with the sale of goods and to what extent ‘GALERIA’ is seen as a distinctive indicator of the type of business. In total, approximately 500 people were interviewed.

 Attachment 11: decision of the Regional Court Hamburg dated 26/07/2011 in German, in which, according to the opponent, its well-known character regarding its company name with respect to household products, inter alia, comprising Class 16 goods is confirmed.

 Attachment 12: screenshots from the German online statistics portal ‘STATISTA’, www.statista.de, which collects data from market and opinion research institutions as well as from the economy, stating that ‘Galeria Kaufhof’ is ‘the most popular department stores in Germany’.

 Attachment 13: screenshots of the results of a public market survey by a company ‘ServiceValue GmbH’, a consulting company that focusses on empirical market, organisational and social research, inter alia, delivering results from customer surveys. This survey ranked ‘Galeria Karstadt Kaufhof’ as the winner and the website ‘galeria-dkaufhof.de’ in third position regarding service quality within the sector of German department stores in 2019.

 Attachment 14: extract of a market research survey conducted by the German market research institute ‘Salvills’. This survey showed the opponent’s well-known character and its high turnovers of ‘Galeria Kaufhof’ until 2014.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Firstly, it must be noted that, although the survey by the institute Ipsos of 2004 does contain some relevant details regarding the recognition of the ‘GALERIA’ mark amongst German consumers, it is manifestly insufficient to prove that the earlier mark enjoyed a high degree of distinctiveness at the relevant point in time. Indeed, if claimed, the reputation or enhanced distinctiveness of the earlier trade mark should exist (i) at the time of filing of the contested EUTM application and (ii) at the time of the decision.

Considering that the EUTM application in question was filed on 03/08/2019, the market survey at issue, which was conducted in 2004, is clearly inadequate to fulfil the abovementioned requirement as regards the relevant point in time.

Establishing the precise point in time for evaluating distinctiveness is important because the degree of distinctiveness of the marks is not constant but varies depending on the perception of the public. This perception may change not only due to the nature of the use of the specific mark, but also due to other factors. For instance, the public’s perception may change where a mark or some component thereof has been used in the meantime in a similar way by various businesses/traders in the relevant market sector.

In addition, the evidence submitted does not show any actual use of the mark on which the opposition is based but of other signs such as or ‘GALERIA KAUFHOF’. The evidence does not provide any indication as regards the market share held by the earlier mark , how intensive, geographically widespread and long-standing the use of the mark has been or the amount invested by the opponent in promoting the mark, etc. The opponent could have submitted additional documents (e.g. invoices, advertisements, turnover and sales figures, press clippings, price lists) containing such indications put into the context of the market and competitors in question. Most of the evidence relates to the opponent itself or to the sign ‘GALERIA KAUFHOF’ as a word mark or figurative mark.

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

Therefore, the Opposition Division concludes that the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Christophe DU JARDIN

Victoria DAFAUCE MENÉNDEZ

Agnieszka PRZYGODA

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.