DECISION

of the Fifth Board of Appeal
of 3 July 2015

In Case R 1410/2014-5

Kabushiki Kaisha Pilot Corporation (t/a Pilot Corporation)
6-21 Kyobashi 2-Chome Chuo-Ku, Tokyo 104-8304 Japan	Opponent / Appellant

represented by VENNER SHIPLEY LLP, 200 Aldersgate, EC1A 4HD, London, United Kingdom

v

Benetton Holdings Ltd.
46 Micoud Street, Castries St. Lucia, West Indies	Applicant / Respondent

represented by SWINDELL & PEARSON LTD, 48 Friar Gate, DE1 1GY, Derby, United Kingdom

APPEAL relating to Opposition Proceedings No B 1 934 929 (Community trade mark application No 10 054 302)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), C. Negro (Rapporteur) and A. Szanyi Felkl (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 16 June 2011, Morgan Samuel (HK) Ltd sought to register the word mark

PILOT

for, inter alia, the list of goods below which, after being amended before the Opposition Division, reads as follows:

Class 16 – Printed matter; bookbinding material; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites -except furniture- including boxes for pens, desk stands and holders for pens, pencils, and ink, memo books with pens attached, pen stands, pen tidies, pen trays, pen tubs; typewriters and office requisites -except furniture- not including boxes for pens, desk stands and holders for pens, pencils, and ink, memo books with pens attached, pen stands, pen tidies, pen trays, pen tubs; typewriters and office requisites -except furniture including stationery; typewriters and office requisites -except furniture- but not including stationery; instructional and teaching material -except apparatus-; plastic materials for packaging not included in other classes; printers' type; printing blocks; printed publications; greetings cards; birthday invitations; wedding invitations; party invitations; birthday cards; christmas cards; wedding cards; new baby cards, baptismal cards, bar mitzvah cards, bat mitzvah cards, maternity leave cards, paternity leave cards, promotion cards, leaving for another job cards, moving house cards, relocation cards and having a baby cards, christian confirmation cards, first confession cards, engagement cards, retirement cards, graduation cards, divorce cards, cards upon professional qualification, cards to celebrate exam success, coming of age cards; gift wrapping; gift wrapping foil; gift wrapping materials; gift wrapping paper; magazines; business card holders; bookmarks, calendars, periodicals, journals, newspapers; newsletters; brochures; flyers; advertising material; paper, cardboard and goods made from these materials, not included in other classes; stationery; stationery not including writing instruments and pens; stationery including boxes for pens, desk stands and holders for pens, pencils, and ink, memo books with pens attached, pen stands, pen tidies, pen trays, pen tubs; stationery not including boxes for pens, desk stands and holders for pens, pencils, and ink, memo books with pens attached, pen stands, pen tidies, pen trays, pen tubs; stationery including writing instruments and pens; stationery including memo books with pens attached; pamphlets, prospectuses, books, forms, maps, magazines, manuals, pictures photographs; photograph albums; calendars; catalogues; instructional and teaching materials; instructional and teaching materials including pens; instructional and teaching materials but not including pens; publicity material; promotional material; advertising material; books; writing instruments; writing instruments including pens; writing instruments not including disposable pens; writing instruments namely ballpoint pen refills, artists' pens, ballpoint pens, boards having a foil surface on which to draw with special pens, containers for pens, ceramic tip pens, colour pens, colouring pens, correcting pens, correction pens, desk organisers incorporating pens, drawing pens, etching pens, felt marking pens, felt-tip pens, felt-tipped pens, felt-tip pens with capillary tops, felt pens for colouring, felt pens for writing, felt writing pens, fiber pens, fibertip pens, film pens, fluorescent markers, highlighter pens, fountain pens, fountain pen ink cartridges, india ink pens, gel roller pens, highlighter pens, glue pens household purposes, glue pens stationery purposes, marking pen refills, marking pens, mechanical pens, pen and pencil boxes, pen and pencil cases, pen ink cartridges, pen ink refills, pen refills, pen sets, writing pens, tubular pens, text markers being pens, text markers being highlighter pens, stylographic pens, steel pens, ink cartridges for pens, ink for pens, ink pens, marker pens, protective tips for pens, refills for ballpoint pens, refills for fibre-tip pens, refills for roller ball pens, roller ball pens, rollerball pens; office requisites other than furniture; stickers; car stickers; programmes; posters; postcards; prints; greeting cards; cards; tickets; leaflets; carrier bags; paper bags; ring binders; notebooks; book covers; folders; diaries; adhesive labels; business cards; business card holders; cases for pens; pens; pens including namely ballpoint pen refills, artists' pens, ball-point pens, boards having a foil surface on which to draw with special pens, containers for pens, ceramic tip pens, colour pens, colouring pens, correcting pens, correction pens, desk organisers incorporating pens, drawing pens, etching pens, felt marking pens, felt-tip pens, felt-tipped pens, felt-tip pens with capillary tops, felt pens for colouring, felt pens for writing, felt writing pens, fiber pens, fibertip pens, film pens, fluorescent markers, highlighter pens, fountain pens, fountain pen ink cartridges, india ink pens, gel roller pens, highlighter pens, glue pens household purposes, glue pens stationery purposes, marking pen refills, marking pens, mechanical pens, pen and pencil boxes, pen and pencil cases, pen ink cartridges, pen ink refills, pen refills, pen sets, writing pens, tubular pens, text markers being pens, text markers being highlighter pens, stylographic pens, steel pens, ink cartridges for pens, ink for pens, ink pens, marker pens, protective tips for pens, refills for ballpoint pens, refills for fibre-tip pens, refills for roller ball pens, roller ball pens, rollerball pens, pencils, writing materials; paper weights; letter openers; souvenir plastic carrier bags; computer programs in printed form; paper tapes, cards, ribbons and discs; paper tissues; paper napkins; menus; tickets; vouchers; parts and fittings for all the aforesaid goods; absorbent sheets of paper or plastic for foodstuff packaging; address plates for addressing machines; address stamps; addressing machines; adhesive bands for stationery or household purposes; adhesive tape dispensers [office requisites]; adhesive tapes for stationery or household purposes; adhesives [glues] for stationery or household purposes; advertisement boards of paper or cardboard; albums; almanacs; announcement cards [stationery]; aquarelles; architects' models; arithmetical tables; artists' watercolor [watercolour] saucers; atlases; bags (conical paper -); bags [envelopes, pouches] of paper or plastics, for packaging; bags for microwave cooking; bags (garbage -) of paper or of plastics; balls for ball-point pens; bibs of paper; binders (loose-leaf -); binding strips [bookbinding]; biological samples for use in microscopy [teaching materials]; blackboards; blotters; blueprints; bookbinding apparatus and machines [office equipment]; bookbinding cloth; bookbinding cords; bookbinding material; bookbindings; bookends; booklets; bookmarkers; books; bottle envelopes of cardboard or paper; bottle wrappers of cardboard or paper; bows (paper -); boxes for pens; boxes of cardboard or paper; bubble packs (plastic -) for wrapping or packaging; cabinets for stationery [office requisites]; calculating tables; calendars; canvas for painting; carbon paper; cardboard ; cardboard articles; cardboard tubes; cards ; cases for stamps [seals]; catalogues; chalk for lithography; chalk holders; chalk (marking -); chaplets; charcoal pencils; chart pointers, non-electronic; charts; checkbooks [cheque books] (holders for -); chromolithographs [chromos]; chromos; cigar bands; clipboards; clips for offices; clips (money -); cloth for bookbinding; coasters of paper; coffee filters (paper -); comic books; compasses for drawing; composing frames [printing]; composing sticks; computer printers (inking ribbons for -); computer programmes (paper tapes and cards for the recordal of -); copying paper [stationery]; cords for bookbinding; correcting fluids [office requisites]; correcting ink [heliography]; correcting tapes [office requisites]; covers of paper for flower pots; covers [stationery]; cream containers of paper; credit card imprinters, non-electric; cutters (paper -) [office requisites]; decalcomanias; diagrams; dispensers (adhesive tape -) [office requisites]; document files [stationery]; document holders [stationery]; document laminators for office use; drawer liners of paper, perfumed or not; drawing boards; drawing instruments; drawing materials; drawing pads; drawing pens; drawing pins; drawing sets; drawing squares; drawing t-squares; duplicators; duplicators (inking sheets for -); easels (painters' -); elastic bands for offices; electrocardiograph paper; electrotypes; embroidery designs [patterns]; engraving plates; engravings; envelope sealing machines, for offices; envelopes [stationery]; erasers (writing board -); erasing products; erasing shields; etching needles; etchings; fabrics for bookbinding; face towels of paper; figurines [statuettes] of papier mâché; files [office requisites]; film (plastic cling -) extensible, for palletization; filter paper; filtering materials [paper]; filters (paper coffee -); finger-stalls [office requisites]; flags of paper; flower-pot covers of paper; flyers; folders for papers; folders [stationery]; forms, printed; fountain pens; franking machines for office use; french curves; galley racks [printing]; garbage bags of paper or of plastics; geographical maps; globes (terrestrial -); glue for stationery or household purposes; gluten [glue] for stationery or household purposes; graining combs; graphic prints; graphic representations; graphic reproductions; greeting cards; gummed cloth for stationery purposes; gummed tape [stationery]; gums [adhesives] for stationery or household purposes; hand labelling appliances; hand-rests for painters; handbooks [manuals]; handkerchiefs of paper; handwriting specimens for copying; hat boxes of cardboard; hectographs; histological sections for teaching purposes; holders for checkbooks [cheque books]; holders for stamps [seals]; holders (passport -); house painters' rollers; humidity control sheets of paper or plastic for foodstuff packaging; hygienic paper; imprinters (credit card -), non-electric; index cards [stationery]; indexes; indian inks; ink ; ink sticks; ink stones [ink reservoirs]; inking pads; inking ribbons; inking ribbons for computer printers; inking sheets for document reproducing machines; inking sheets for duplicators; inkstands; inkwells; isinglass for stationery or household purposes; jackets for papers; jacquard looms (perforated cards for -); knives (paper -) [office requisites]; labels, not of textile; laminators (document -) for office use; ledgers [books]; letter trays; letters [type]; lithographic stones; lithographic works of art; lithographs; loose-leaf binders; luminous paper; magazines [periodicals]; manifolds [stationery]; manuals [handbooks]; maps (geographical -); marking chalk; marking pens [stationery]; mats for beer glasses; microwave cooking (bags for -); mimeograph apparatus and machines; modelling clay; modelling clays (molds for -) [artists' materials]; modelling clays (moulds for -) [artists' materials]; modelling materials; modelling paste; modelling wax, not for dental purposes; models (architects' -); moisteners for gummed surfaces [office requisites]; moisteners [office requisites]; molds for modelling clays [artists' materials]; money clips; moulds for modelling clays [artists' materials]; mounting photographs (apparatus for -); musical greeting cards; napkins of paper for removing make-up; napkins of paper (table -); newsletters; newspapers; nibs; nibs of gold; note books; numbering apparatus; numbers [type]; obliterating stamps; office perforators; office requisites, except furniture; oleographs; packaging material made of starches; packing paper; pads [stationery]; pads (writing -); paint boxes [articles for use in school]; paint trays; paintbrushes; painters' brushes; painters' easels; paintings [pictures], framed or unframed; palettes for painters; pamphlets; pantographs [drawing instruments]; paper ; paper bows; paper clasps; paper-clips; paper (electro-cardiograph -); paper for recording machines; paper knives [cutters] [office requisites]; paper ribbons; paper sheets [stationery]; paper shredders for office use; paper tapes and cards for the recordal of computer programmes; paper (waxed -); paperweights; papier mâché; parchment paper; passport holders; pastels [crayons]; pastes for stationery or household purposes; patterns for dressmaking; patterns for making clothes; pen cases; pen clips; pen wipers; pencil holders; pencil lead holders; pencil leads; pencil sharpeners, electric or non-electric; pencil sharpening machines, electric or non-electric; pencils; penholders; pens [office requisites]; perforated cards for jacquard looms; periodicals; photo-engravings; photograph stands; photographs (apparatus for mounting -); photographs [printed]; pictures; placards of paper or cardboard; place mats of paper; plans; plastic cling film, extensible, for palletization; plastic film for wrapping; plastics for modelling; plates for addressing machines (address -); pointers (chart -), non-electronic; portraits; postage meters for office use; postage stamps; postcards; posters; printed matter; printed publications; printed timetables; printers' blankets, not of textile; printers' reglets; printing blocks; printing sets, portable [office requisites]; printing type; prints [engravings]; prospectuses; publications (printed -); punches [office requisites]; radiograms (paper for -); reproductions (graphic -); ribbons (paper -); rollers for typewriters; rollers (house painters' -); rosaries; rubber erasers; rulers (drawing -); rulers (square -); saucers (watercolor [watercolour] -) for artists; school supplies [stationery]; scrapbooks; scrapers [erasers] for offices; sealing compounds for stationery purposes; sealing machines for offices; sealing stamps; sealing wafers; sealing wax; seals [stamps]; self-adhesive tapes for stationery or household purposes; sheets of reclaimed cellulose for wrapping; shields (erasing -); shields [paper seals]; signboards of paper or cardboard; silver paper; slate pencils; song books; spools for inking ribbons; square rulers; squares (drawing -); stamp pads; stamp stands; stamps (address -); stamps [seals]; stamps [seals] (cases for -); stands for pens and pencils; staples for offices; stapling presses [office requisites]; starch paste [adhesive] for stationery or household purposes; starches (packaging material made of -); stationery; stationery (cabinets for -) [office requisites]; steatite [tailor's chalk]; steel letters; steel pens; stencil cases; stencil plates; stencils; stencils [stationery]; stickers [stationery]; stones (lithographic -); t-squares (drawing -); table linen of paper; table napkins of paper; tablecloths of paper; tablemats of paper; tables (arithmetical -); tables (calculating -); tags for index cards; tailors' chalk; teaching materials [except apparatus]; terrestrial globes; thumbtacks; tickets; timetables (printed -); tissues of paper for removing make-up; toilet paper; towels of paper; tracing cloth; tracing needles for drawing purposes; tracing paper; tracing patterns; trading cards other than for games; transfers [decalcomanias]; transparencies [stationery]; trays for sorting and counting money; tubes (cardboard -); type [numerals and letters]; typewriter keys; typewriter ribbons; typewriters, electric or non-electric; vignetting apparatus; viscose sheets for wrapping; watercolor saucers (artists' -); watercolors [paintings]; watercolour saucers (artists' -); watercolours [paintings]; wax (sealing -); waxed paper; wood pulp board [stationery]; wood pulp paper; wrappers [stationery]; wrapping paper; wristbands for the retention of writing instruments; writing board erasers; writing brushes; writing cases [sets]; writing cases [stationery]; writing chalk; writing instruments; writing materials; writing or drawing books; writing pads; writing paper; writing slates; writing tablets; xuan paper for Chinese painting and calligraphy.

2. The application was published in the Community Trade Marks Bulletin No 159/2011 of 24 August 2011.

3. On 21 November 2011, Kabushiki Kaisha Pilot Corporation (t/a Pilot Corporation) filed a notice of opposition against the registration of the published trade mark for part the goods originally applied for (i.e. before the amendment), namely:

Class 16 – ‘bookbinding material; adhesives for stationery or household purposes; artists' materials; paint brushes; instructional and teaching material (except apparatus); stationery’ ‘instructional and teaching materials; writing instruments; office requisites (other than furniture); stickers; car stickers; ring binders; notebooks; folders; adhesive labels; cases for pens; pens, pencils, writing materials; parts and fittings for all the aforesaid goods.

4. The opposition was based on the following earlier rights:

• United Kingdom trade mark registration No 2 178 974 of the figurative mark registered on 30 July 1999 for, inter alia, the following goods:

Class 16 – Stands for holding writing instruments; writing implements; parts and fittings therefor; wallets, all adapted for use with writing implements; boards in the nature of blackboards and parts and fittings adapted for use therewith; erasers and refills therefor, markers and refills therefor, all adapted for use with aforesaid boards; easels; all included in Class 16; but not including refill inks for markers.

• United Kingdom trade mark registration No 607 35B of the word mark ‘PILOT’, registered on 5 January 1887 for, inter alia, the following goods:

Class 16 – Writing implements; parts and fittings for writing implements; stands and wallets, all adapted for use with writing implements; boards in the nature of blackboards and parts and fittings adapted for use therewith; erasers, and refills therefor, all adapted for use with the aforesaid boards; easels; but not including refill inks for markers.

5. The grounds of opposition are those laid down in Article 8(1)(a) and (b) CTMR.

6. On 6 February 2012 the Office forwarded the applicant’s observations to the opponent and invited the latter to provide proof of use of its earlier marks as requested by the applicant.

7. On 10 April 2012, the opponent submitted further facts and arguments as well as the requested proof of use. It also requested that some goods should be removed from the list of goods that served as a basis of the opposition, namely ‘wallets; boards in the nature of blackboards and parts and fittings adapted for use therewith; erasers, and refills therefor, all adapted for use with the aforesaid boards; easels’.

8. On 28 May 2012, the applicant submitted its observations in reply, whereby it refuted the evidence produced by the opponent and requested the Opposition Division to reject the opposition.

9. On 22 April 2014, the Opposition Division adopted its decision (‘the contested decision’), partially upholding the opposition and ordering each party to bear its own costs. The Opposition Division reasoned as follows:

Proof of Use

10. On 10 April 2012 the opponent submitted evidence as proof of use. The evidence consists of, inter alia, the following documents:

• Cover letter from the opponent’s representative introducing the evidence.

• Witness statement by Hiromoto Watanabe, Director and President of the opponent, dated 20 March 2012. The witness statement has been sent as two pages although is numbered as being three. The two pages sent (pages 1 and 3) give details of the opponent’s history in the United Kingdom, stating that offices were established in London in 1926, and that the opponent spent 400,000 GBP in 2009 and 230,000 GBP in 2010 on advertising PILOT branded goods in the United Kingdom.

• Exhibit HW1: 48 pages of a document entitled Trade Price List (Valid from January 2009) and a 2010 Price List (amending the 2009 list). The first item is in the form of a catalogue, in which items appear with a picture of the goods, a short description and other particulars, such as product code and price details. Almost all of the images of the products show one or both of the marks in question, as do some of the description (e.g. page 27, ‘Pilot’s Capless Fountain Pen’). The second element is a text only list giving the individual items, recommended retail price, excluding VAT, units and trade price. These items can be cross referenced to the items in the catalogue via the product codes. The goods shown are, amongst others, a wide range of pens (ball point, fountain pen, fineliners, highlighter pens, drawing pens, permanent and waterproof pens and markers, OHP markers), mechanical pencils, lead refills, etc. The goods are priced in pounds sterling and the contact details shown are clearly within the United Kingdom (address, telephone number and website).

• Exhibit HW2: 20 pages of shipping notes from Pilot Corporation of Europe to The Pilot Pen Company (UK) Ltd. The earliest document is from
  24 February 2010 and the latest is 7 May 2010. At least some of the goods shown have product codes and descriptions which correspond to items appearing in the catalogue in HW1, e.g. page 59, items 9 and 10, BL-P70 appears on page 15, page 65, item 3, LGK-10F appears on page 16, page 67, item 8, BXGPN-V10 appears on page 20, etc. The opponent has redacted the sales figures, which are in Japanese Yen, although the quantities of the goods sold are shown, in values such as volumes of boxes or dozens.

• Exhibit HW3: 7 pages of invoices from The Pilot Pen Company (UK) Ltd to six different UK customers. The earliest document is from 20/01/2009 and the latest is 26/08/2010. At least some of the goods shown have product codes and descriptions which correspond to items appearing in the catalogue in HW1, e.g. page 80, item 2, SVPN4W appears on page 22, page 81, item 7, BXGPN-V10 appears on page 20, page 82, item 1, BL-FR7 appears on page 14, page 84, item 10, BL-P70 appears on page 15, etc. The opponent has redacted the sales figures, although the quantities of the goods sold are shown, and they are in the hundreds or thousands.

• Exhibit HW4: 4 pages of a document entitled Christmas Promotions 2008, showing various goods (e.g. Capless Fountain Pen, Deluxe Rollerballs Pen, Gel Marker pens, mechanical pencils) offered for sale at UK prices.

• Exhibit HW5: 5 pages of a publicity leaflets regarding Pilot brand goods. In English but undated.

• The documents filed, especially exhibits HW1, HW 3 and HW4, all show dated evidence of either sales or the offering for sale of goods using the marks within the relevant period and territory. Therefore, the Opposition Division finds that it does reach the minimum level necessary to establish genuine use during the relevant period in the relevant territory.

• However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier marks, but only for ‘writing implements; markers, all adapted for use with aforesaid boards; all included in Class 16; but not including refill inks for markers’ (trade mark No 2 178 974) and ‘writing implements; but not including refill inks for markers’ (trade mark No 607 35B).

Likelihood of confusion

• For reasons of procedural economy, the Opposition Division first examined the opposition in relation to earlier trade mark registration No 607 35B.

The goods

• The contested ‘writing instruments; pens, pencils’, ‘stationery; writing materials’ are considered identical to the opponent’s goods.

• The contested ‘artists' materials’, ‘office requisites (other than furniture); paint brushes’, ‘cases for pens’, ‘parts and fittings for all the aforesaid goods’ are considered similar to the opponent’s goods.

• The contested ‘adhesives for stationery or household purposes’ are considered similar to a low degree to the opponent’s goods.

• However, the contested ‘bookbinding material; instructional and teaching material (except apparatus); instructional and teaching materials; stickers; car stickers; ring binders; notebooks; folders; adhesive labels; parts and fittings for all the aforesaid goods’ are all goods with a different nature and purpose to the earlier right’s goods. They differ in producer, end users, and distribution channels, and they are neither complementary nor in competition with one another. These goods are, therefore, considered to be dissimilar to the earlier right’s goods.

• On 25 January 2013 the applicant asked to amend, amongst others, the list of goods in Class 16. The application was filed with all the terms of the class heading of the Nice classification system for this class plus other terms. The applicant asked to amend this to include the addition of all the alphabetical goods in Class 16 plus further goods. The amendment has been accepted for Class 16 as the applicant, by virtue of having the class heading, already had implicitly all the goods correctly classified under Class 16.

• In the notice of opposition, the opponent contested ‘bookbinding material; adhesives for stationery or household purposes; artists' materials; paint brushes; instructional and teaching material (except apparatus); stationery’ of the Class heading in Class 16.

• Furthermore the opponent also attacked the specific items ‘instructional and teaching materials; writing instruments; office requisites (other than furniture); stickers; car stickers; ring binders; notebooks; folders; adhesive labels; cases for pens; pens, pencils, writing materials; parts and fittings for all the aforesaid goods.’

• Therefore, any goods from the amended list which (i) either fall under the Class heading item listed above or (ii) are synonymous with or included within the specific items above are considered opposed in the notice of opposition.

• Therefore, the following list contains those goods from the amended list which the Opposition Division deems to have been included in the scope of the opposition:

‘Typewriters and office requisites -except furniture- including boxes for pens, desk stands and holders for pens, pencils, and ink, memo books with pens attached, pen stands, pen tidies, pen trays, pen tubs; typewriters and office requisites -except furniture- not including boxes for pens, desk stands and holders for pens, pencils, and ink, memo books with pens attached, pen stands, pen tidies, pen trays, pen tubs; typewriters and office requisites -except furniture including stationery; typewriters and office requisites -except furniture- but not including stationery; stationery not including writing instruments and pens; stationery including boxes for pens, desk stands and holders for pens, pencils, and ink, memo books with pens attached, pen stands, pen tidies, pen trays, pen tubs; stationery not including boxes for pens, desk stands and holders for pens, pencils, and ink, memo books with pens attached, pen stands, pen tidies, pen trays, pen tubs; stationery including writing instruments and pens; stationery including memo books with pens attached; instructional and teaching materials including pens; instructional and teaching materials but not including pens; writing instruments including pens; writing instruments not including disposable pens; writing instruments namely ballpoint pen refills, artists' pens, ballpoint pens, boards having a foil surface on which to draw with special pens, containers for pens, ceramic tip pens, colour pens, colouring pens, correcting pens, correction pens, desk organisers incorporating pens, drawing pens, etching pens, felt marking pens, felt-tip pens, felt-tipped pens, felt-tip pens with capillary tops, felt pens for colouring, felt pens for writing, felt writing pens, fiber pens, fibertip pens, film pens, fluorescent markers, highlighter pens, fountain pens, fountain pen ink cartridges, india ink pens, gel roller pens, highlighter pens, glue pens household purposes, glue pens stationery purposes, marking pen refills, marking pens, mechanical pens, pen and pencil boxes, pen and pencil cases, pen ink cartridges, pen ink refills, pen refills, pen sets, writing pens, tubular pens, text markers being pens, text markers being highlighter pens, stylographic pens, steel pens, ink cartridges for pens, ink for pens, ink pens, marker pens, protective tips for pens, refills for ballpoint pens, refills for fibre-tip pens, refills for roller ball pens, roller ball pens, rollerball pens; pens including namely ballpoint pen refills, artists' pens, ball-point pens, boards having a foil surface on which to draw with special pens, containers for pens, ceramic tip pens, colour pens, colouring pens, correcting pens, correction pens, desk organisers incorporating pens, drawing pens, etching pens, felt marking pens, felt-tip pens, felt-tipped pens, felt-tip pens with capillary tops, felt pens for colouring, felt pens for writing, felt writing pens, fiber pens, fibertip pens, film pens, fluorescent markers, highlighter pens, fountain pens, fountain pen ink cartridges, india ink pens, gel roller pens, highlighter pens, glue pens household purposes, glue pens stationery purposes, marking pen refills, marking pens, mechanical pens, pen and pencil boxes, pen and pencil cases, pen ink cartridges, pen ink refills, pen refills, pen sets, writing pens, tubular pens, text markers being pens, text markers being highlighter pens, stylographic pens, steel pens, ink cartridges for pens, ink for pens, ink pens, marker pens, protective tips for pens, refills for ballpoint pens, refills for fibre-tip pens, refills for roller ball pens, roller ball pens, rollerball pens, pencils, writing materials; parts and fittings for all the aforesaid goods; address plates for addressing machines; addressing machines; adhesive bands for stationery or household purposes; adhesive tape dispensers [office requisites]; adhesive tapes for stationery or household purposes; adhesives [glues] for stationery or household purposes; announcement cards [stationery]; aquarelles; architects' models; artists' watercolor [watercolour] saucers; balls for ball-point pens; binders (loose-leaf -); binding strips [bookbinding]; biological samples for use in microscopy [teaching materials]; blackboards; blotters; blueprints; bookbinding apparatus and machines [office equipment]; bookbinding cloth; bookbinding cords; bookbinding material; bookbindings; bookends; booklets; bookmarkers; boxes for pens; cabinets for stationery [office requisites]; canvas for painting; carbon paper; cases for stamps [seals]; chalk for lithography; chalk holders; chalk (marking -); charcoal pencils; chart pointers, non-electronic; charts; clipboards; clips for offices; cloth for bookbinding; compasses for drawing; computer printers (inking ribbons for -); copying paper [stationery]; cords for bookbinding; correcting fluids [office requisites]; correcting tapes [office requisites]; covers [stationery]; credit card imprinters, non-electric; cutters (paper -) [office requisites]; decalcomanias; diagrams; dispensers (adhesive tape -) [office requisites]; document files [stationery]; document holders [stationery]; document laminators for office use; drawer liners of paper, perfumed or not; drawing boards; drawing instruments; drawing materials; drawing pads; drawing pens; drawing pins; drawing sets; drawing squares; drawing t-squares; duplicators; duplicators (inking sheets for -); easels (painters' -); elastic bands for offices; envelope sealing machines, for offices; envelopes [stationery]; erasers (writing board -); erasing products; erasing shields; etching needles; fabrics for bookbinding; files [office requisites]; finger-stalls [office requisites]; folders for papers; folders [stationery]; fountain pens; franking machines for office use; french curves; galley racks [printing]; geographical maps; globes (terrestrial -); glue for stationery or household purposes; gluten [glue] for stationery or household purposes; graining combs; gummed cloth for stationery purposes; gummed tape [stationery]; gums [adhesives] for stationery or household purposes; hand labelling appliances; hand-rests for painters; hectographs; histological sections for teaching purposes; holders for stamps [seals]; house painters' rollers; imprinters (credit card -), non-electric; index cards [stationery]; indexes; indian inks; ink ; ink sticks; ink stones [ink reservoirs]; inking pads; inking ribbons; inking ribbons for computer printers; inking sheets for document reproducing machines; inking sheets for duplicators; inkstands; inkwells; isinglass for stationery or household purposes; jackets for papers; knives (paper -) [office requisites]; laminators (document -) for office use; letter trays; lithographic stones; loose-leaf binders; manifolds [stationery]; marking chalk; marking pens [stationery]; mimeograph apparatus and machines; modelling clay; modelling clays (molds for -) [artists' materials]; modelling clays (moulds for -) [artists' materials]; modelling materials; modelling paste; modelling wax, not for dental purposes; models (architects' -); moisteners for gummed surfaces [office requisites]; moisteners [office requisites]; molds for modelling clays [artists' materials]; moulds for modelling clays [artists' materials]; musical greeting cards; nibs; nibs of gold; note books; numbering apparatus; office perforators; office requisites, except furniture; pads [stationery]; pads (writing -); paint boxes [articles for use in school]; paint trays; paintbrushes; painters' brushes; painters' easels; palettes for painters; pantographs [drawing instruments]; paper clasps; paper-clips; paper knives [cutters] [office requisites]; paper sheets [stationery]; paper shredders for office use; paperweights; pastels [crayons]; pastes for stationery or household purposes; pen cases; pen clips; pen wipers; pencil holders; pencil lead holders; pencil leads; pencil sharpeners, electric or non-electric; pencil sharpening machines, electric or non-electric; pencils; penholders; pens [office requisites]; plastics for modelling; plates for addressing machines (address -); pointers (chart -), non-electronic; postage meters for office use; printers' blankets, not of textile; punches [office requisites]; rollers for typewriters; rollers (house painters' -); rubber erasers; rulers (drawing -); rulers (square -); saucers (watercolor [watercolour] -) for artists; school supplies [stationery]; scrapbooks; scrapers [erasers] for offices; sealing compounds for stationery purposes; sealing machines for offices; sealing stamps; sealing wafers; sealing wax; seals [stamps]; self-adhesive tapes for stationery or household purposes; shields (erasing -); shields [paper seals]; slate pencils; spools for inking ribbons; square rulers; squares (drawing -); stamp pads; stamp stands; stamps (address -); stamps [seals]; stamps [seals] (cases for -); stands for pens and pencils; staples for offices; stapling presses [office requisites]; starch paste [adhesive] for stationery or household purposes; stationery; stationery (cabinets for -) [office requisites]; steatite [tailor's chalk]; steel pens; stencil cases; stencils; stencils [stationery]; stickers [stationery]; stones (lithographic -); t-squares (drawing -); tags for index cards; tailors' chalk; teaching materials [except apparatus]; terrestrial globes; thumbtacks; tracing cloth; tracing needles for drawing purposes; tracing paper; tracing patterns; transparencies [stationery]; trays for sorting and counting money; typewriter keys; typewriter ribbons; typewriters, electric or non-electric; vignetting apparatus; watercolor saucers (artists' -); watercolors [paintings]; watercolour saucers (artists' -); watercolours [paintings]; wax (sealing -); wood pulp board [stationery]; wrappers [stationery]; wristbands for the retention of writing instruments; writing board erasers; writing brushes; writing cases [sets]; writing cases [stationery]; writing chalk; writing instruments; writing materials; writing or drawing books; writing pads; writing slates; writing tablets.’

• The contested ‘office requisites -except furniture including stationery’ ‘stationery including boxes for pens, desk stands and holders for pens, pencils, and ink, memo books with pens attached, pen stands, pen tidies, pen trays, pen tubs; stationery not including boxes for pens, desk stands and holders for pens, pencils, and ink, memo books with pens attached, pen stands, pen tidies, pen trays, pen tubs; stationery including writing instruments and pens; stationery including memo books with pens attached’, ‘pens including namely ballpoint pen refills, artists' pens, ball-point pens, boards having a foil surface on which to draw with special pens, containers for pens, ceramic tip pens, colour pens, colouring pens, correcting pens, correction pens, desk organisers incorporating pens, drawing pens, etching pens, felt marking pens, felt-tip pens, felt-tipped pens, felt-tip pens with capillary tops, felt pens for colouring, felt pens for writing, felt writing pens, fiber pens, fibertip pens, film pens, fluorescent markers, highlighter pens, fountain pens, fountain pen ink cartridges, india ink pens, gel roller pens, highlighter pens, glue pens household purposes, glue pens stationery purposes, marking pen refills, marking pens, mechanical pens, pen and pencil boxes, pen and pencil cases, pen ink cartridges, pen ink refills, pen refills, pen sets, writing pens, tubular pens, text markers being pens, text markers being highlighter pens, stylographic pens, steel pens, ink cartridges for pens, ink for pens, ink pens, marker pens, protective tips for pens, refills for ballpoint pens, refills for fibre-tip pens, refills for roller ball pens, roller ball pens, rollerball pens’, ‘writing instruments including pens; writing instruments not including disposable pens’, ‘instructional and teaching materials including pens’, ‘writing instruments namely artists' pens, ballpoint pens, ceramic tip pens, colour pens, correcting pens, correction pens, etching pens, felt marking pens, felt-tip pens, felt-tipped pens, felt-tip pens with capillary tops, felt pens for writing, felt writing pens, fiber pens, fibertip pens, film pens, fluorescent markers, highlighter pens, fountain pens, india ink pens, gel roller pens, highlighter pens, marking pens, mechanical pens, pen sets, writing pens, tubular pens, text markers being pens, text markers being highlighter pens, stylographic pens, steel pens, ink pens, marker pens, roller ball pens, rollerball pens; Charcoal pencils; Fountain pens; Marking pens [stationery]; Pencils; Pens [office requisites]; Slate pencils; Steel pens; Writing brushes; Writing chalk’ are considered identical to the opponent’s ‘writing implements’.

• The contested ‘office requisites -except furniture- including boxes for pens, desk stands and holders for pens, pencils, and ink, memo books with pens attached, pen stands, pen tidies, pen trays, pen tubs; office requisites -except furniture- not including boxes for pens, desk stands and holders for pens, pencils, and ink, memo books with pens attached, pen stands, pen tidies, pen trays, pen tubs and office requisites -except furniture- but not including stationery’, ‘stationery not including writing instruments and pens’, ‘school supplies [stationery]’, ‘writing instruments namely, containers for pens, desk organisers incorporating pens, pen and pencil boxes, pen and pencil cases; blotters; boxes for pens; chalk holders; compasses for drawing; correcting fluids [office requisites]; correcting tapes [office requisites]; drawing squares; drawing t-squares; erasing products; erasing shields; french curves; ink sticks; ink stones [ink reservoirs]; inkstands; inkwells; pantographs [drawing instruments]; pen cases; pen clips; pen wipers; pencil holders; pencil lead holders; pencil sharpeners, electric or non-electric; pencil sharpening machines, electric or non-electric; penholders; rubber erasers; rulers (drawing -); rulers (square -); shields (erasing -); square rulers; squares (drawing -); stands for pens and pencils; stencil cases; stencils; stencils [stationery]; t-squares (drawing -); wristbands for the retention of writing instruments; writing board erasers; writing cases [sets]; writing cases [stationery]’, ‘paintbrushes; painters' brushes’ are considered to be similar to the opponent’s goods.

• The contested ‘writing instruments namely colouring pens, drawing pens, felt pens for colouring; chalk for lithography; drawing instruments; drawing materials; drawing pens; pastels [crayons], chalk (marking -); marking chalk; steatite [tailor's chalk]; tailors' chalk, drawing sets’, ‘writing instruments namely ballpoint pen refills, fountain pen ink cartridges, marking pen refills, pen ink cartridges, pen ink refills, pen refills, ink cartridges for pens, ink for pens, protective tips for pens, refills for ballpoint pens, refills for fibre-tip pens, refills for roller ball pens; balls for ball-point pens; pencil leads; indian inks; ink; nibs; nibs of gold’ are considered to be highly similar to the opponent’s goods.

• However, the more specific ‘painting goods of graining combs; house painters' rollers and rollers (house painters' -)’ are considered to be dissimilar to the opponent´s goods.

• The following goods are considered to fall under the heading ‘adhesives for stationery or household purposes’: ‘writing instruments namely glue pens household purposes, glue pens stationery purposes, adhesive bands for stationery or household purposes; adhesive tapes for stationery or household purposes; adhesives [glues] for stationery or household purposes; glue for stationery or household purposes; gluten [glue] for stationery or household purposes; gums [adhesives] for stationery or household purposes; gummed cloth for stationery purposes; gummed tape [stationery]; pastes for stationery or household purposes; self-adhesive tapes for stationery or household purposes; starch paste [adhesive] for stationery or household purposes’ are considered to be similar to a low degree.

• The contested ‘instructional and teaching materials but not including pens’ is the broad category of ‘stationery’ but explicitly excludes some of the earlier right’s goods. ‘Instructional and teaching materials’ are goods used for teaching, such as globes, maps, charts, models, etc. These goods all have a different nature and purpose to the earlier right’s goods. They differ in producer, end users, and distribution channels. These goods are, therefore, considered to be dissimilar to the earlier right’s goods.

• The following goods are considered to fall under the heading ‘bookbinding material’ (they are more specialist in nature than ‘bookbinding apparatus and machines’ which form part of office requisites): ‘Binding strips [bookbinding]; bookbinding cloth; bookbinding cords; bookbinding material; bookbindings; cloth for bookbinding; cords for bookbinding; fabrics for bookbinding’. They are all goods with a different nature and purpose to the earlier right’s goods. They differ in producer, end users, and distribution channels. These goods are, therefore, considered to be dissimilar to the earlier right’s goods.

• The following goods are types of ‘artists’ materials’: ‘aquarelles; artists' watercolour [watercolour] saucers; canvas for painting; easels (painter’ -); etching needles; hand-rests for painters; lithographic stones; modelling clay; modelling clay (molds for -) [artists' materials]; modelling clay (moulds for -) [artists' materials]; modelling materials; modelling paste; modelling wax, not for dental purposes; molds for modelling clays [artists' materials]; moulds for modelling clays [artists' materials]; paint trays; painters' easels; palettes for painters; plastics for modelling; saucers (watercolor [watercolour] -) for artists; stones (lithographic -); watercolour saucers (artists' -); watercolor saucers (artists' -); watercolors [paintings]; watercolours [paintings]’. They are all goods with a different nature and purpose to the earlier right’s goods. They differ in producer, end users, and distribution channels. These goods are, therefore, considered to be dissimilar to the earlier right’s goods.

• The following goods are ‘material used for instruction or teaching’: ‘architects' models; biological samples for use in microscopy [teaching materials]; blackboards; chart pointers, non-electronic; charts; diagrams; erasers (writing board -); geographical maps; globes (terrestrial -); histological sections for teaching purposes; models (architects' -); pointers (chart -), non-electronic; teaching materials [except apparatus]; terrestrial globes; typewriter keys’. They are all goods with a different nature and purpose to the earlier right’s goods. They differ in producer, end users, and distribution channels. These goods are, therefore, considered to be dissimilar to the earlier right’s goods.

• The following goods are all items of ‘stationery’: ‘writing instruments namely boards having a foil surface on which to draw with special pens; announcement cards [stationery]; binders (loose-leaf -); blueprints; bookends; booklets; bookmarkers; carbon paper; cases for stamps [seals]; clipboards; clips for offices; computer printers (inking ribbons for -); copying paper [stationery]; covers [stationery]; decalcomanias; document files [stationery]; document holders [stationery]; drawer liners of paper, perfumed or not; drawing pads; drawing pins; duplicators (inking sheets for -); elastic bands for offices; envelopes [stationery]; folders for papers; folders [stationery]; holders for stamps [seals]; index cards [stationery]; indexes; inking pads; inking ribbons; inking ribbons for computer printers; inking sheets for document reproducing machines; inking sheets for duplicators; isinglass for stationery or household purposes; jackets for papers; loose-leaf binders; manifolds [stationery]; musical greeting cards; note books; pads [stationery]; pads (writing -); paint boxes [articles for use in school]; paper clasps; paper-clips; paper sheets [stationery]; paperweights; rollers for typewriters; scrapbooks; scrapers [erasers] for offices; sealing compounds for stationery purposes; sealing stamps; sealing wafers; sealing wax; seals [stamps]; shields [paper seals]; spools for inking ribbons; stamp pads; stamp stands; stamps (address -); stamps [seals]; stamps [seals] (cases for -); staples for offices; stapling presses [office requisites]; stickers [stationery]; tags for index cards; thumbtacks; tracing cloth; tracing needles for drawing purposes; tracing paper; tracing patterns; transparencies [stationery]; typewriter ribbons; wax (sealing -); wood pulp board [stationery]; wrappers [stationery]; writing or drawing books; writing pads; writing slates; writing tablets’. The earlier right’s goods are also items of stationery, but the goods above are all stationery items with quite different purposes and all have a very different nature from writing implements. They differ in producer, end users, and, even when being sold in the same shops, they will not be sold in the same sections. These goods are, therefore, considered to be dissimilar to the earlier right’s goods.

• The following goods are all ‘office requisites’: ‘address plates for addressing machines; addressing machines; adhesive tape dispensers [office requisites]; bookbinding apparatus and machines [office equipment]; cabinets for stationery [office requisites]; credit card imprinters, non-electric; cutters (paper -) [office requisites]; dispensers (adhesive tape -) [office requisites]; document laminators for office use; drawing boards; duplicators; envelope sealing machines, for offices; files [office requisites]; finger-stalls [office requisites]; franking machines for office use; galley racks [printing]; hand labelling appliances; hectographs; imprinters (credit card -), non-electric; knives (paper -) [office requisites]; laminators (document -) for office use; letter trays; mimeograph apparatus and machines; moisteners for gummed surfaces [office requisites]; moisteners [office requisites]; numbering apparatus; office perforators; office requisites, except furniture; paper knives [cutters] [office requisites]; paper shredders for office use; plates for addressing machines (address -); postage meters for office use; printers' blankets, not of textile; punches [office requisites]; sealing machines for offices; stationery (cabinets for -) [office requisites]; trays for sorting and counting money; typewriters (appearing multiple times); typewriters, electric or non-electric; vignetting apparatus’. The earlier right’s goods are also items of stationery, but the goods above are all specific office items with quite different purposes and/or all have a very different nature from ‘writing implements’. They differ in producer, end users, and, even when being sold in the same shops, they will not be sold in the same sections. These goods are, therefore, considered to be dissimilar to the earlier right’s goods.

Global assessment

• The signs are identical and a part of the contested goods are identical. Therefore the opposition must be upheld according to Article 8(1)(a) CTMR for these goods.

• Furthermore, some more of the contested goods were found to be similar to various degrees to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) CTMR and the opposition is upheld also in so far as it is directed against these goods, including those goods found similar only 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. Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 607 35B. It follows that the contested trade mark must be rejected for all the contested goods found identical or similar to whatever degree.

• The other earlier right invoked by the opponent, No 2 178 974, covers essentially the same goods as those already compared; the additional ‘markers’ are another form of writing implement. A fortiori, no likelihood of confusion exists as far as this earlier right is concerned with respect to those contested goods which have already been found to be dissimilar.

Submissions and arguments of the parties

11. On 2 June 2014 the opponent filed a notice of appeal against part of the contested decision and on 12 August 2014 it submitted the statement of grounds.
    The opponent requested the contested decision to be annulled in so far as the opposition was not upheld for the following goods in Class 16:

‘bookbinding material; instructional and teaching material (except apparatus); instructional and teaching materials; stickers; car stickers; ring binders; notebooks; folders; adhesive labels; address stamps; dispensers [office requisites]; albums; announcement cards [stationery]; arithmetical tables; artists' watercolour [watercolour] saucers; binders (loose-leaf -); binding strips [bookbinding]; blackboards; bookbinding apparatus cloth; bookbinding cords; bookbinding material; bookbindings; bookends; bookmakers; cabinets for stationery [office requisites]; calculating tables; canvas for painting; carbon paper; cardboard articles; cardboard tubes; cards; cases for stamps [seals]; chart pointers, non-electronic; charts; checkbooks [cheque books] (holders for-); clipboards; clips for offices; cloth for bookbinding; copying paper [stationery]; cords for bookbinding; correcting ink [heliography]; covers [stationery]; cutters (paper-) [office requisites]; decalcomanias; dispensers (adhesive tape -) [office requisites]; document files [stationery]; document holders [stationery]; drawing boards; drawing pads; drawing pins; easels (painters'-); elastic bands for offices; electrocardiograph paper; engraving plates; envelopes [stationery]; erasers (writing board-); etching needles; fabrics for bookbinding; files [office requisites]; finger stalls [office requisites]; folders for paper; folders [stationery]; forms, printed; globes (terrestrial-); greeting cards; hand- rests for painters; handwriting specimens for copying; holders for stamps [seals]; index cards [stationery]; indexes; inking pads; jackets for papers; knives (paper-) [office requisites]; labels not, of textile; ledgers [books]; letter trays; loose-leaf binders; modelling clay; modelling clays (molds for-) [artists' materials]; modelling clays (moulds for-) [artists' materials]; modelling materials; moisteners for gummed surfaces [office requisites]; moisteners [office requisites]; molds for modelling clays [artists' materials]; moulds for modelling clays [artists' materials]; mounting photographs (apparatus for-); musical greeting cards; note books; numbering apparatus; office perforators; office requisites, except furniture; pads [stationery]; pads (writing-); paint boxes [articles for use in school]; painters' easels; palettes for painters; paper bows; paper clasps; paper-clips; paper (electro-cardiograph-); paper knives [cutters] [office requisites]; paper ribbons; paper sheets [stationery]; paperweights; papier mache; photographs (apparatus for mounting-); placards of paper or cardboards; pointers (chart-), non-electronic; postcards; punches [office requisites]; ribbons (paper-); saucers (watercolour [watercolour] -) for artists; scrapbooks; scrapers [erasers] for offices; sealing stamps; sealing wafers; seals [stamps]; shields (erasing-); shields [paper seals]; stamp pads; stamp stands; stamps (address-); stamps [seals]; stamps [seals] (cases for-); staples for offices; stapling presses [office requisites]; stationery (cabinets for-) [office requisites]; stencil plates; stickers [stationery]; tables (arithmetical-); tables (calculating-); tags for index cards; teaching materials [except apparatus]; terrestrial globes; thumbtacks; tracing cloth; tracing paper; transfers [decalcomanias]; transparencies [stationery]; tubes (cardboard -); watercolour saucers (artists'-); watercolour saucers (artists'); wood pulp board [stationery]; wrappers [stationery]; wrapping paper; writing or drawing books; writing pads; writing paper; writing slates; writing tablets.’

12. The opponent’s main arguments may be summarized as follows:

• The Office failed to apply the so-called ‘Canon test’ in assessing the similarity of the goods under comparison.

• The Office erred in finding dissimilar the above-listed goods from those of the opponent.

• The Office also erred in its finding that the opponent did not prove genuine use for all the goods covered by its earlier rights. In particular, the Opposition Division failed to explain why genuine use has not been established for ‘parts and fittings for writing instruments; stands, all adapted for use with writing implements’.

• With regard to assessing the similarity of the goods, the opponent claims that the Office did not give sufficient weight to the complementarity of many of its goods and the importance of the consumer’s perception with regard to goods sold through the same channels in both on-line and physical retail places, as proven by extracts from websites confirming that the majority of the opponent’s products are sold through the same outlets as the applicant’s goods.

• Moreover, the opponent’s and the applicant’s goods are advertised in the same categories of goods and sold in the same specialized shops and online departments.

Comparison of originally opposed terms

• The terms ‘instructional and teaching material (except apparatus); instructional and teaching materials’ are complementary to ‘writing implements’ in that there is a close connection with these goods, as they are important to the use of many of the goods in this general category. They have the same end users and the same sale and distribution channels, and are therefore similar to the opponent’s goods. The same arguments apply to ‘notebooks’, ‘adhesive labels’, ‘stickers, car stickers, ring binders, folders’, which are also similar.

• The ‘bookbinding materials’ have a more specialist end user than writing implements. Nonetheless, consumers who buy these materials will also buy writing implements, therefore these goods are also similar.

Comparison of new terms

• The majority of the newly introduced terms by the applicant are sold alongside each other in the same stores. Despite their specific nature and purpose, they fall within a broader category which could be produced by the same or an associated undertaking.

• A writing ‘implement’ is more than just a pen or pencil. The goods ‘etching needles’, although describing a pointed implement used to cut through the ground on an etching plate used in printing, may be used to produce drawings or writing. Therefore they are identical to ‘writing implements’.

• The goods ‘writing slates, writing tablets, engraving plates’ are all complementary to a variety of writing implements, as they could not be used without a writing implement of some sort. They are similar to ‘writing implements’. The same applies to ‘netbooks, cards, envelopes (stationery), forms, printed, index cards (stationery), indexes, ledgers (books), musical greeting cards, pads (stationery), pads (writing), non-electronic postcards, scrapbooks, stickers (stationery), writing or drawing books, writing pads, writing paper, paper sheets (stationery)’.

• As to ‘carbon paper, copying paper (stationery), reading cards, ring binders, folders, announcement cards (stationery), binders (loose-leaf), covers (stationery), document files (stationery), documents holders (stationery), electro-cardiograph paper, folders for paper, folders (stationery), transparencies (stationery), wood pulp board albums, wrappers (stationery), wrapping paper, loose-leaf binders, paperweights, inking pads, jackets for papers, mounting photographs (apparatus for -), photographs (apparatus for mounting -)’, they may not always require the use of a writing implement, but will be produced and sold alongside goods which do, as well as writing implements themselves.

• With regard to ‘sealing stamps, wafers, seals (stamps), stamp pads, stamp stands, stamps (address), stamps (seals), stamps (seals) (cases for), cardboard articles, cardboard tubes, tubes (cardboard), shields (erasing), shields (paper seals), papers ribbons, placards for paper for cardboard, ribbons (paper), cases for stamps (seals), checkbooks (cheque books) (holders for), handwriting specimens for copying, holders for stamps (seals), paper bows, paper clasps, paper (electro-cardiograph)’, they will have the same end user as the opponent’s goods, may have the same producer, and the same distribution and retail outlets. Therefore they are similar to the opponent’s goods.

• The Office found ‘paint brushes; painters’ brushes’ to be similar to the opponent’s goods, but found most of the remaining types of ‘artists’ materials’ dissimilar. However, the end users for most of these products might be the same. Therefore, ‘artists’ (watercolour saucers); canvas for painting; drawing boards; easels (painters); hand rests for paints; paint boxes (articles for use in school); painter’s easels; palettes for painters; saucers (watercolour) for artists; watercolour saucers (artists’)’ are similar to the opponent’s goods as they have the same general purpose, end user and distribution channels as ‘writing implements’.

• The goods ‘modelling clay, modelling clays (moulds for-) (artists’ materials); modelling materials; moulds for modelling clays (artists’ materials); papier maché; transfers (decalcomanias); stencil plates’ also have the same end user and distribution channels as the opponent’s goods; therefore they are similar.

• The Office accepted the opposition in relation to ‘instructional and teaching materials including pens’, but refused in relation to ‘instructional and teaching materials not including pens’, which seems contradictory.

• As for ‘arithmetical tables; calculating tables; chart pointers non-electronic; pointers (chart non-electronic); charts; globes (terrestrial-); tables (arithmetical -); tables (calculating -); terrestrial globes; blackboards; numbering apparatus; erasers (writing board -)’, as well as ‘erasers (writing board) and ‘blackboards’, they are always used in connection with or sold alongside some kind of writing implements, therefore are complementary and for that reason similar to the opponent’s goods.

• The goods ‘address stamps; dispensers [office requisites]; clipboards; clips for offices; correcting ink [heliography]; cutters (paper-) [office requisites]; decalcomanias; dispensers (adhesive tape -) [office requisites]; elastic bands for offices; moisteners for gummed surfaces [office requisites]; moisteners [office requisites]; staples for offices; stapling presses [office requisites]; stationery (cabinets for-) [office requisites tags for index cards thumbtacks; cabinets for stationery [office requisites]; labels not, of textile; letters trays; office perforators; office requisites, except furniture; paper-clips; paper knives [cutters] [office requisites]; punches [office requisites]; scrapers [erasers] for offices’ are small office goods sold alongside writing implements and having the same end users. Therefore they are also similar to the opponent’s goods.

• With regard to ‘binding strips [bookbinding]; bookbinding cloth; bookbinding cords; bookbinding material; bookbinding; cloth for bookbinding; cords for bookbinding; fabric for bookbinding’, they are bought by the same people who buy writing implements, and sold in same places as these goods; therefore they are also similar to a degree to the opponent’s goods.

Likelihood of confusion

• Given the signs’ identity and the similarity to some degree, even if that is a low degree, of the goods listed above, the applicant’s sign should be also refused for these goods too.

13. The applicant submitted no observations in reply.

Reasons

14. The appeal complies with Articles 58, 59 and 60 CTMR and Rule 48 of CTMIR. It is, therefore, admissible.

Scope of the appeal

15. According to Article 59 CTMR, ‘any party to proceedings adversely affected by a decision may appeal’. Moreover, pursuant to Article 8(3) BoA-RP, in inter partes proceedings, the defendant may, in its response, seek a decision annulling or altering the contested decision on a point not raised in the appeal. As the applicant did not submit any observations in reply to the present appeal, it did not dispute the Opposition Division’s findings with regard to the contested goods for which the opposition was upheld. Therefore, the part of the contested decision upholding the opposition for some of the contested goods in Class 16 has become final. As a consequence, the scope of the appeal is limited to the contested goods for which the opposition was rejected.

Preliminary remarks

16. First of all, the Board notes that the goods challenged by the opponent in its appeal (see supra, paragraph 11) do not fully correspond to the goods for which the opposition was rejected. For example, goods such as ‘arithmetical tables; checkbooks [cheque books] (holders for-); electrocardiograph paper; engraving plates; mounting photographs (apparatus for-); papier mache; ribbons (paper-)’ do not appear among the goods that formed part of the opposition, as specified by the Opposition Division in its decision (see pages 7 to 14). Moreover, although the opponent contests the decision ‘insofar as the opposition was not upheld’ (see the observations submitted on 02.06.2014), some of the goods for which the opposition was rejected are left out from the goods listed by the opponent (under the heading ‘Extent of appeal’).

17. Notwithstanding that the goods listed by the opponent do not fully correspond to the goods for which the opposition was rejected, it is, nevertheless, clear that the opponent contests the decision insofar as the opposition was rejected. Therefore, the Board will consider all (originally) contested goods that were held to be dissimilar to the opponent´s goods and in relation to which the Opposition Division rejected the opposition.

18. Secondly, the opponent argues that the Opposition Division erred in finding that genuine use was not proven for some the goods covered by its earlier marks, namely ‘parts and fittings for writing instruments; stands, all adapted for use with writing implements’. However, even if the opponent´s allegations were true with regard to the said goods, this would have no impact on the outcome of the present appeal, for the reasons set out below. As a consequence, there is no need for the Board to assess the opponent’s claim regarding the alleged use of these goods.

Likelihood of confusion - Article 8(1)(b) CTMR

19. It follows from Article 8(1)(b) CTMR that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

20. According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see 09.07.2003, T-162/01, Giorgio Beverly Hills, EU:T:2003:199, § 30 to 33 and the case-law cited).

The relevant public and the consumer’s level of attention

21. The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (see 01.07.2008, T 328/05, Quartz, EU:T:2008:238, § 23). The public’s attentiveness will vary depending on the kinds of goods and services involved (see 22.06.1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26 and 30.06.2004, T 186/02, Dieselit, EU:T:2004:197, § 38).

22. In the present case, as the earlier rights are United Kingdom trade mark registrations, the relevant territory in respect of which the likelihood of confusion must be assessed is the United Kingdom.

23. As for the relevant public, the conflicting goods in Class 16 are directed at both the average consumer and the professional public. It can be expected that the level of attentiveness paid by the targeted public may range from average to high, depending on the price and the technical nature of the goods. In this regard, it must also be recalled that business professionals are likely to have specific knowledge of the goods covered by the marks at issue and/or to display, in that regard, a higher level of attentiveness than the public at large (see, to that effect, 15.01.2013, T 451/11, Gigabyte, EU:T:2013:13, § 38 and the case-law cited).

Comparison of the goods

24. It is settled case-law that in assessing the similarity of the goods and services, all the relevant factors relating to those goods and services should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (see 29.09.1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (see 11.07.2007, T‑443/05, Pirañam, EU:T:2007:219, § 37).

25. Goods and services are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods lies with the same undertaking (see 01.03.2005, T‑169/03, Sissi Rossi, EU:T:2005:72, § 60).

26. The contested goods subject of the present appeal are the following:

Class 16 – Bookbinding material; instructional and teaching material (except apparatus); instructional and teaching materials; stickers; car stickers; ring binders; notebooks; folders; adhesive labels; parts and fittings for all the aforesaid goods; painting goods of graining combs; house painters' rollers and rollers (house painters' -); instructional and teaching materials but not including pens; binding strips [bookbinding]; bookbinding cloth; bookbinding cords; bookbinding material; bookbindings; cloth for bookbinding; cords for bookbinding; fabrics for bookbinding; aquarelles; artists' watercolour [watercolour] saucers; canvas for painting; easels (painter’ -); etching needles; hand-rests for painters; lithographic stones; modelling clay; modelling clay (molds for -) [artists' materials]; modelling clay (moulds for -) [artists' materials]; modelling materials; modelling paste; modelling wax, not for dental purposes; molds for modelling clays [artists' materials]; moulds for modelling clays [artists' materials]; paint trays; painters' easels; palettes for painters; plastics for modelling; saucers (watercolor [watercolour] -) for artists; stones (lithographic -); watercolour saucers (artists' -); watercolor saucers (artists' -); watercolors [paintings]; watercolours [paintings]; material used for instruction or teaching’: ‘architects' models; biological samples for use in microscopy [teaching materials]; blackboards; chart pointers, non-electronic; charts; diagrams; erasers (writing board -); geographical maps; globes (terrestrial -); histological sections for teaching purposes; models (architects' -); pointers (chart -), non-electronic; teaching materials [except apparatus]; terrestrial globes; typewriter keys; ‘writing instruments namely boards having a foil surface on which to draw with special pens; announcement cards [stationery]; binders (loose-leaf -); blueprints; bookends; booklets; bookmarkers; carbon paper; cases for stamps [seals]; clipboards; clips for offices; computer printers (inking ribbons for -); copying paper [stationery]; covers [stationery]; decalcomanias; document files [stationery]; document holders [stationery]; drawer liners of paper, perfumed or not; drawing pads; drawing pins; duplicators (inking sheets for -); elastic bands for offices; envelopes [stationery]; folders for papers; folders [stationery]; holders for stamps [seals]; index cards [stationery]; indexes; inking pads; inking ribbons; inking ribbons for computer printers; inking sheets for document reproducing machines; inking sheets for duplicators; isinglass for stationery or household purposes; jackets for papers; loose-leaf binders; manifolds [stationery]; musical greeting cards; note books; pads [stationery]; pads (writing -); paint boxes [articles for use in school]; paper clasps; paper-clips; paper sheets [stationery]; paperweights; rollers for typewriters; scrapbooks; scrapers [erasers] for offices; sealing compounds for stationery purposes; sealing stamps; sealing wafers; sealing wax; seals [stamps]; shields [paper seals]; spools for inking ribbons; stamp pads; stamp stands; stamps (address -); stamps [seals]; stamps [seals] (cases for -); staples for offices; stapling presses [office requisites]; stickers [stationery]; tags for index cards; thumbtacks; tracing cloth; tracing needles for drawing purposes; tracing paper; tracing patterns; transparencies [stationery]; typewriter ribbons; wax (sealing -); wood pulp board [stationery]; wrappers [stationery]; writing or drawing books; writing pads; writing slates; writing tablets; address plates for addressing machines; addressing machines; adhesive tape dispensers [office requisites]; bookbinding apparatus and machines [office equipment]; cabinets for stationery [office requisites]; credit card imprinters, non-electric; cutters (paper -) [office requisites]; dispensers (adhesive tape -) [office requisites]; document laminators for office use; drawing boards; duplicators; envelope sealing machines, for offices; files [office requisites]; finger-stalls [office requisites]; franking machines for office use; galley racks [printing]; hand labelling appliances; hectographs; imprinters (credit card -), non-electric; knives (paper -) [office requisites]; laminators (document -) for office use; letter trays; mimeograph apparatus and machines; moisteners for gummed surfaces [office requisites]; moisteners [office requisites]; numbering apparatus; office perforators; office requisites, except furniture; paper knives [cutters] [office requisites]; paper shredders for office use; plates for addressing machines (address -); postage meters for office use; printers' blankets, not of textile; punches [office requisites]; sealing machines for offices; stationery (cabinets for -) [office requisites]; trays for sorting and counting money; typewriters (appearing multiple times); typewriters, electric or non-electric; vignetting apparatus.

27. These goods must be compared with the goods on which the opposition is based, and for which genuine use has been shown, namely:

United Kingdom trade mark registration No 2 178 974:

Class 16 –‘Writing implements; markers, all adapted for use with aforesaid boards (boards in the nature of blackboards); all included in Class 16; but not including refill inks for markers’.

United Kingdom trade mark registration No 607 35B:

Class 16 – ‘Writing implements; but not including refill inks for markers’.

28. Moreover, following what has been said above in paragraph 18, the Board will also consider the opponent´s ‘parts and fittings for writing instruments; stands, all adapted for use with writing implements’ in the comparison below.

29. First of all, the Board notes that the contested decision upheld the opposition for the goods ‘office requisites, other than furniture’, which were found to be similar to the opponent´s goods (see pages 1 and 8 of the contested decision). On the other hand, the contested ‘office requisites, except furniture’ were held to be dissimilar to the opponent´s goods (page 18 of the contested decision). As a result, given that the latter goods did not appear among the goods for which the opposition was upheld (listed in the decision´s dictum), the opposition was (arguably) rejected for these goods.

30. Notwithstanding the contradictory finding with regard to the above ‘office requisites’, the Board finds that the broad category ‘office requisites, except furniture’ partially includes, and overlaps with, the opponent´s ‘writing implements’ insofar as both categories include, among other things, standard writing implements used in the daily work at any office. Consequently, these goods must be considered to be identical.

31. Moreover, the contested ‘instructional and teaching material (except apparatus); instructional and teaching materials; parts and fittings for all the aforesaid goods; instructional and teaching materials but not including pens; material used for instruction or teaching; teaching materials [except apparatus]’ are all items used by teachers, instructors and professors in order to give their classes. The general description ‘instructional and teaching material’ include things such as slides, blackboards, books, exercise books, educational games or visual aids. What characterizes these goods is their purpose, i.e. to assist the instructor or teacher in his or her teaching activity. The targeted public is therefore made up of instructors and teachers.

32. The opponent´s goods, on the other hand, are not merely intended for instructional purposes or teaching. They have, nevertheless, some relevant points of contact with the contested goods. First of all, the broad category of the applicant´s instructional and/or teaching material encompasses many different kinds of items which must be taken into consideration when comparing the goods. If not, the full scope of the goods applied for would be ignored (see, with regard to the concept of ‘identity’ and the situation where goods or services designated by the earlier mark are included in a more general category designated by the mark applied for, judgment of 22.05.2012, T-585/10, PENTEO, EU:T:2012:251, § 57 and the case law cited). Thus, it must be considered that the applicant´s goods include, among other things, ‘blackboards’, which clearly are complementary to the opponent’s special (water based, erasable) ‘markers’ intended for such boards. Moreover, the conflicting goods coincide in distribution channels and target the same consumers (e.g. schools, universities or other bodies rendering educational services). Therefore, contrary to the Opposition Division´s finding, the contested ‘instructional and teaching material (except apparatus); instructional and teaching materials; parts and fittings for all the aforesaid goods; instructional and teaching materials but not including pens; material used for instruction or teaching; teaching materials [except apparatus]’ are sufficiently linked to the opponent´s ‘markers, all adapted for use with aforesaid boards’ (i.e. blackboards) for concluding that the goods are similar to a certain degree.

33. Likewise, ‘writing instruments namely boards having a foil surface on which to draw with special pens’, ‘blackboards’, ‘writing slates’ and ‘writing tablets’ are similar to the ‘writing implements’ covered by the earlier marks. The goods are complementary given that writing implements in the form of non-permanent markers (‘dry-erase markers’), slate pens, chalk pencils or styluses are necessary for the use of the applicant´s ‘boards having a foil surface’, ‘blackboards’, ‘slates’ and ‘tablets’, in such a way that consumers may think that the responsibility for the production of those goods lies with the same undertaking. They are also distributed together through the same trade channels and to the same end users.

34. Furthermore, ‘note books; parts and fittings for all the aforesaid goods; pads [stationery]; pads (writing -); writing or drawing books; writing pads; paper sheets [stationery]; ‘drawing boards’ are, contrary to the Opposition Division´s findings, similar to the opponent´s ‘writing implements’, at least to a low degree. The latter goods are indispensable for the use of the goods applied for and these goods are frequently sold together in sets. Therefore, consumers may very well think that the responsibility for the production of the conflicting goods lies with the same undertaking.

35. A certain degree of similarity can also be found with regard to ‘etching needles’ and ‘tracing needles for drawing purposes’, which have a design and a construction that is very similar to that of many writing implements. In that regard, ‘writing implements’ include not only standard ‘stationery’ pens, but also more specialised drawing pens used by artists and designers. Thus, the goods' purpose and targeted consumers can coincide to the extent they are used for creating drawings or other works of art on a given surface. Also given that specialised drawing pens and the above special needles can be distributed through the same commercial channels, the Board must conclude that the goods are similar to a certain degree.

36. A low degree of similarity exists between the opponent’s goods and the following common items of stationery or office requisites applied for: ‘erasers (writing board -); stickers; adhesive labels; parts and fittings for all the aforesaid goods; bookmarkers; carbon paper; cases for stamps [seals]; clipboards; clips for offices; elastic bands for offices; scrapers [erasers] for offices; holders for stamps [seals]; index cards [stationery]; indexes; isinglass for stationery or household purposes; manifolds [stationery]; paper clasps; paper-clips; paperweights; transparencies [stationery]; sealing compounds for stationery purposes; sealing stamps; sealing wafers; sealing wax; seals [stamps]; shields [paper seals]; stamp pads; stamp stands; stamps (address -); stamps [seals]; stamps [seals] (cases for -); staples for offices; stapling presses [office requisites]; stickers [stationery]; tags for index cards; thumbtacks; wax (sealing -); wood pulp board [stationery]; wrappers [stationery]; adhesive tape dispensers [office requisites]; copying paper [stationery]; cabinets for stationery [office requisites]; cutters (paper -) [office requisites]; dispensers (adhesive tape -) [office requisites]; finger-stalls [office requisites]; hand labelling appliances; ring binders; folders; parts and fittings for all the aforesaid goods; binders (loose-leaf -); covers [stationery]; document files [stationery]; document holders [stationery]; folders for papers; folders [stationery]; jackets for papers; loose-leaf binders; files [office requisites]; chart pointers, non-electronic; pointers (chart -), non-electronic; envelopes [stationery]; inking pads; bookends’’. Those conflicting goods target the same public, such as students, schools and other academic institutions, as well as companies’ purchase departments of office requisites. They are sold in close connection with each other in the same shops or in same sections of department stores, and they are frequently purchased at the same time. In addition, some of those contested goods, such as, for instance, ‘erasers’, are complementary to writing instruments given that they are important, if not necessary, for the use of the other. Therefore, despite their different nature and method of use, those goods display, as observed, a low degree of similarity.

37. A similar reasoning applies to some of the applicant´s items of artists' or painters' materials, namely ‘artists' watercolour [watercolour] saucers; canvas for painting; easels (painter’ -); hand-rests for painters; drawing pins; duplicators (inking sheets for -); paint boxes [articles for use in school]; paint trays; painters' easels; palettes for painters; saucers (watercolor [watercolour] -) for artists; watercolour saucers (artists' -); watercolor saucers (artists' -); watercolors [paintings]; watercolours [paintings]; tracing cloth; tracing paper; tracing patterns’. Those goods are connected to writing implement owing to the close connection between the activities of writing and painting, which both consist in representing (letters, symbols, etc. and objects, scenes, etc. respectively) on a surface and whose final purpose is, thus, similar. Furthermore, those conflicting goods can be found in the same outlets or in the same or adjoining sections of department stores. Some of those goods (for instance, watercolours) can even coincide in manufacturers and/or be sold under the same brand. Therefore, a low degree of similarity exists between those goods.

38. With regard to the remaining goods subject of the appeal, the Board shares the Opposition Division’s finding that they are dissimilar to the opponent’s goods.

39. Among these goods are ‘bookbinding material’, ‘parts and fittings for all the aforesaid goods’ and a variety of materials and implements used in the process of assembling books, namely ‘binding strips [bookbinding]’, ‘bookbinding cloth’, ‘bookbinding cords’, ‘bookbindings’, ‘cloth for bookbinding’, ‘cords for bookbinding’; ‘fabrics for bookbinding’ and ‘bookbinding apparatus and machines [office equipment]’. Apart from the fact that the nature of these goods differs significantly from that of the opponent´s writing implements and markers (as well as the opponent´s ‘parts and fittings for writing instruments; stands, all adapted for use with writing implements’), their purpose and method of use is very distinct as well. There is no complementary relationship between the goods and they are not in competition. While it may be true that specialist consumers who buy and use bookbinding materials also buy and use writing implements, as argued by the opponent, this is not a circumstance that is decisive given that writing implements (as well as parts, fittings and stands relating thereto) target professionals in numerous fields of businesses, as well as the public at large. Moreover, specialists in the field of bookbinding may buy a wide range of goods that they use in their business, without these goods necessarily being ‘similar’ (e.g. fabrics for bookbinding, working tables and computers).

40. Moreover, the opponent’s reference to the goods provided by ‘Shepherds London’ (‘Schedule 3’) or from the companies ‘Herlitz, ‘Staedtler’ and ‘Trodat’ (‘Schedule 8f’), does not prove that bookbinding material and writing implements, more than occasionally, are distributed through the same trade channels. In any event, the mere fact that these goods may be sold by the same undertakings, especially when they offer a wide range of products, is not sufficient to establish any degree of similarity between the goods. Finally, there is nothing that suggests that the conflicting goods are, as an established trade custom, manufactured by the same producers. In the view of the above, the opponent´s finding that the goods are similar cannot be upheld.

41. The Board also agrees with the contested decision´s finding that ‘blueprints; computer printers (inking ribbons for -); printers' blankets, not of textile; rollers for typewriters; typewriter ribbons; address plates for addressing machines; addressing machines; credit card imprinters, non-electric; document laminators for office use; envelope sealing machines, for offices; franking machines for office use; galley racks [printing]; hectographs; imprinters (credit card -), non-electric; laminators (document -) for office use; mimeograph apparatus and machines; numbering apparatus; paper shredders for office use; plates for addressing machines (address -); postage meters for office use; sealing machines for offices; trays for sorting and counting money; typewriters (appearing multiple times); typewriters, electric or non-electric; typewriter keys; inking ribbons; inking ribbons for computer printers; inking sheets for document reproducing machines; inking sheets for duplicators; spools for inking ribbons’ are dissimilar to the opponent´s goods. Those contested goods consist of specific technical (and often expensive) office apparatus and machines and relevant accessories which usually have specific distribution channels that do not coincide with those of opponent´s writing implements and markers (as well as the opponent´s ‘parts and fittings for writing instruments; stands, all adapted for use with writing implements’). Furthermore, owing to their specific technical nature, those goods are usually manufactured by specialised entities which differ from the producers of the opponent’s goods.

42. Similar considerations apply to the contested goods ‘car stickers (and parts and fittings for all the aforesaid goods); house painters' rollers and rollers (house painters' -); architects' models; charts; diagrams; geographical maps; globes (terrestrial -); models (architects' -); terrestrial globes; drawer liners of paper, perfumed or not; announcement cards [stationery]; musical greeting cards; scrapbooks; duplicators; vignetting apparatus; biological samples for use in microscopy [teaching materials]; histological sections for teaching purposes; booklets; aquarelles; decalcomanias’, which are even more remote to the opponent´s goods as regards their nature, purpose and method of use. Those goods are gift items (e.g. announcement cards and musical greeting cards, scrapbooks, aquarelles), specific teaching or professional material (e.g. architects' models; charts; diagrams; geographical maps; terrestrial globes; histological sections for teaching purposes) or household items (e.g. house painters' rollers, drawer liners of paper, perfumed or not) whose nature, purpose and method of use is very different from the opponent´s writing implements and markers (as well as the opponent´s ‘parts and fittings for writing instruments; stands, all adapted for use with writing implements’). Those goods are not in competition. Moreover, there is no complementary relationship between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods lies with the same undertaking (see 01.03.2005, T 169/03, Sissi Rossi, EU:T:2005:72, § 60). Bearing in mind the above, the mere fact that those goods may occasionally be distributed through the same trade channels is not sufficient for a finding of similarity. Thus, as correctly concluded by the Opposition Division, those goods are dissimilar.

43. In line with the contested decision, the following items of artists' materials are also found dissimilar to the opponent’s goods: ‘painting goods of graining combs; lithographic stones; modelling clay; modelling clay (molds for -) [artists' materials]; modelling clay (moulds for -) [artists' materials]; modelling materials; modelling paste; modelling wax, not for dental purposes; molds for modelling clays [artists' materials]; moulds for modelling clays [artists' materials]; plastics for modelling; stones (lithographic -)’. Unlike painting-related items, those goods have no relevant points of contact with the opponent’s writing implements and markers (as well as the ‘parts and fittings for writing instruments; stands, all adapted for use with writing implements’). In fact, those goods differ in nature, purpose and method of use, they are not interchangeable nor are they complementary. Moreover, those goods are usually manufactured by different producers and are usually sold under different brands.

Comparison of the signs

44. The signs to be compared are:

Contested sign	Earlier signs
PILOT	(UK registration No 2 178 974) PILOT (UK registration No 607 35B)

45. The contested sign is identical to the opponent´s word mark.

46. The comparison of the conflicting signs in relation to the visual, aural or conceptual similarity of the marks in question has to take into account the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (06.10.2005, C‑120/04, Thomson Life, EU:C:2005:594, § 28).

47. With regard to the earlier figurative mark, the sign’s figurative element is rather eye-catching and occupies a substantial part of the mark. However, it is not of such a nature so as to divert the consumer’s attention away from the word element ‘PILOT’, which constitutes the part of the mark that the public will more easily remember and use to identify that sign. Therefore, despite the fact that the earlier CTM contains an additional figurative element, the signs at issue are visually similar to, at the very least, an average degree. With regard to the earlier word mark, there is evidently a full identity.

48. Aurally, the marks are identical.

49. The signs are identical from a conceptual perspective, as they both contain the word ‘PILOT’ meaning, inter alia, ‘a person who is qualified to operate an aircraft or spacecraft in flight’, ‘a person who acts as a leader or guide’ or ‘to control the course of’ (see Collins English Dictionary, online version, www.collinsdictionary.com).

50. Considering the above findings, given that the signs are visually similar and identical from both an aural and a conceptual perspective, there is a high degree of similarity between the marks overall.

Distinctive character of the earlier mark

51. The earlier ‘PILOT’ marks have an average level of distinctiveness character in relation to the goods they concern.

Global assessment

52. In the present case, some of the goods are identical whereas others are similar to varying degrees or dissimilar. Since no identity or similarity has been established with regard to some of the goods subject of the appeal, one of the necessary conditions of Article 8(1) CTMR is not fulfilled with respect to those goods. Consequently, the appeal must be rejected insofar as these (dissimilar) goods are concerned.

53. With regard to the earlier mark’s figurative element, it should be borne in mind that, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see, by analogy, 15.12.2009, T 412/08, Trubion, EU:T:2009:507, § 45 and the case-law cited therein).

54. Moreover, the overall assessment entails certain interdependence between the factors taken into account and, in particular, the similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17 and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

55. Taking into account the relevant factors and their mutual interdependence, especially the fact that the conflicting signs are identical and highly similar, respectively, and that the earlier marks' degree of distinctiveness is average, the Board considers that there is a likelihood of confusion on part of the public for the goods found to be either identical or similar to varying degrees, namely:

Class 16 – Instructional and teaching material (except apparatus); instructional and teaching materials; stickers; ring binders; notebooks; folders; adhesive labels; parts and fittings for all the aforesaid goods; instructional and teaching materials but not including pens; artists' watercolour [watercolour] saucers; canvas for painting; easels (painter’ -); etching needles; hand-rests for painters; paint trays; painters' easels; palettes for painters; saucers (watercolor [watercolour] -) for artists; watercolour saucers (artists' -); watercolor saucers (artists' -); watercolors [paintings]; watercolours [paintings]; material used for instruction or teaching’: blackboards; chart pointers, non-electronic; erasers (writing board -); pointers (chart -), non-electronic; teaching materials [except apparatus]; ‘writing instruments namely boards having a foil surface on which to draw with special pens; announcement cards [stationery]; binders (loose-leaf -); bookends; bookmarkers; carbon paper; cases for stamps [seals]; clipboards; clips for offices; copying paper [stationery]; covers [stationery]; document files [stationery]; document holders [stationery]; drawing pads; drawing pins; elastic bands for offices; envelopes [stationery]; folders for papers; folders [stationery]; holders for stamps [seals]; index cards [stationery]; indexes; inking pads; isinglass for stationery or household purposes; jackets for papers; loose-leaf binders; manifolds [stationery]; note books; pads [stationery]; pads (writing -); paint boxes [articles for use in school]; paper clasps; paper-clips; paper sheets [stationery]; paperweights; scrapbooks; scrapers [erasers] for offices; sealing compounds for stationery purposes; sealing stamps; sealing wafers; sealing wax; seals [stamps]; shields [paper seals]; stamp pads; stamp stands; stamps (address -); stamps [seals]; stamps [seals] (cases for -); staples for offices; stapling presses [office requisites]; stickers [stationery]; tags for index cards; thumbtacks; tracing cloth; tracing needles for drawing purposes; tracing paper; tracing patterns; transparencies [stationery]; wax (sealing -); wood pulp board [stationery]; wrappers [stationery]; writing or drawing books; writing pads; writing slates; writing tablets; adhesive tape dispensers [office requisites]; cabinets for stationery [office requisites]; cutters (paper -) [office requisites]; dispensers (adhesive tape -) [office requisites]; drawing boards; files [office requisites]; finger-stalls [office requisites]; hand labelling appliances; knives (paper -) [office requisites]; letter trays; moisteners for gummed surfaces [office requisites]; moisteners [office requisites]; office perforators; office requisites, except furniture; paper knives [cutters] [office requisites]; punches [office requisites]; stationery (cabinets for -) [office requisites].

56. It follows from the above that the opposition has to be allowed insofar as the identical and similar goods indicated in paragraph 58 are concerned. The opposition is rejected for the remaining goods subject of the appeal.

Costs

57. Since both the appeal and the opposition succeeded only in part, pursuant to Article 85(2) CTMR, each party shall be ordered to bear its own fees and costs incurred in the appeal and opposition proceedings.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision to the extent that it rejected the opposition with respect to:

Class 16 – Instructional and teaching material (except apparatus); instructional and teaching materials; stickers; ring binders; notebooks; folders; adhesive labels; parts and fittings for all the aforesaid goods; instructional and teaching materials but not including pens; artists' watercolour [watercolour] saucers; canvas for painting; easels (painter’ -); etching needles; hand-rests for painters; paint trays; painters' easels; palettes for painters; saucers (watercolor [watercolour] -) for artists; watercolour saucers (artists' -); watercolor saucers (artists' -); watercolors [paintings]; watercolours [paintings]; material used for instruction or teaching’: blackboards; chart pointers, non-electronic; erasers (writing board -); pointers (chart -), non-electronic; teaching materials [except apparatus]; ‘writing instruments namely boards having a foil surface on which to draw with special pens; announcement cards [stationery]; binders (loose-leaf -); bookends; bookmarkers; carbon paper; cases for stamps [seals]; clipboards; clips for offices; copying paper [stationery]; covers [stationery]; document files [stationery]; document holders [stationery]; drawing pads; drawing pins; elastic bands for offices; envelopes [stationery]; folders for papers; folders [stationery]; holders for stamps [seals]; index cards [stationery]; indexes; inking pads; isinglass for stationery or household purposes; jackets for papers; loose-leaf binders; manifolds [stationery]; note books; pads [stationery]; pads (writing -); paint boxes [articles for use in school]; paper clasps; paper-clips; paper sheets [stationery]; paperweights; scrapbooks; scrapers [erasers] for offices; sealing compounds for stationery purposes; sealing stamps; sealing wafers; sealing wax; seals [stamps]; shields [paper seals]; stamp pads; stamp stands; stamps (address -); stamps [seals]; stamps [seals] (cases for -); staples for offices; stapling presses [office requisites]; stickers [stationery]; tags for index cards; thumbtacks; tracing cloth; tracing needles for drawing purposes; tracing paper; tracing patterns; transparencies [stationery]; wax (sealing -); wood pulp board [stationery]; wrappers [stationery]; writing or drawing books; writing pads; writing slates; writing tablets; adhesive tape dispensers [office requisites]; cabinets for stationery [office requisites]; cutters (paper -) [office requisites]; dispensers (adhesive tape -) [office requisites]; drawing boards; files [office requisites]; finger-stalls [office requisites]; hand labelling appliances; knives (paper -) [office requisites]; letter trays; moisteners for gummed surfaces [office requisites]; moisteners [office requisites]; office perforators; office requisites, except furniture; paper knives [cutters] [office requisites]; punches [office requisites]; stationery (cabinets for -) [office requisites];

2. Rejects the contested CTM for the goods listed above;

3. Dismisses the appeal for the remainder;

4. Orders each party to bear its own costs and fees in the opposition and appeal proceedings.

Signed G. Humphreys

Signed C. Negro

Signed A. Szanyi Felkl

Registrar: Signed H.Dijkema