OPPOSITION No B 2 658 030

Kazagreto Ltd., Suite 4 Level 2, Parklane Business Centre, Mountbatten Street, Hamrun HMR 1556, Malta (opponent), represented by Amereller Rechtsanwälte Partnerschaft mbB, Palais am Lenbachplatz, Lenbachplatz 4, 80333 München, Germany (professional representative)

a g a i n s t

Lethe sp. z o.o., Komorowicka 110, 43-300 Bielsko-Biała, Poland (applicant), represented by Joanna Kulińska, Rudzica 287, 43-394 Rudzica, Poland (professional representative).

On 11/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 658 030 is partially upheld, namely for the following contested goods:

Class 9: Recorded content; Media content; Electronic publications recorded on computer media; Downloadable image files; Electronic publications, downloadable; Downloadable computer graphics; Downloadable publications; Audio visual recordings; Software; Recorded tapes; Magnetic recordings; Prerecorded magnetic data carriers; Holograms; Holographic film; Telephone ring tones [downloadable]; Optical disc recordings; E-books; Downloadable movies; Downloadable graphics for mobile phones; Interactive DVDs; Audio books; Talking books; Downloadable electronic books; Musical sound recordings; Downloadable musical sound recordings; Musical video recordings; Downloadable digital music; Prerecorded videodiscs; Recorded tape cassettes; Prerecorded video cassettes featuring cartoons; Prerecorded video cassettes featuring music; Prerecorded CD-ROMs; Prerecorded CD-Is; Pre-recorded DVDs featuring music; Prerecorded exercise DVDs; Prerecorded fitness DVDs; Prerecorded music compact discs; Prerecorded audio tapes featuring music; Audio recordings; Prerecorded video tapes featuring music; Musical recordings in the form of discs; Tape recordings of music; Prerecorded motion picture videos; Prerecorded music videos; Holographic images; Multimedia software recorded on CD-ROM; Downloadable music files; Records [sound recordings]; Compact discs featuring music; Recorded discs bearing sound; Recorded discs bearing images; Video disks with recorded animated cartoons; Transparent films [photographic, exposed] for overhead projectors; Video tapes with recorded animated cartoons; Downloadable printable planners and organizers; Pre-recorded audio tapes; Pre-recorded videos; Series of musical sound recordings are included in the broad categories of the opponent’s Recorded content; Media content; Computer software applications, downloadable; Downloadable applications for use with mobile devices; Freeware; Interfaces for computers; Computer application software; Computer graphics software; Computer application software for mobile telephones; Computer game software downloadable from a global computer network; Music-composition software; Downloadable software; Software for processing digital images; Software and applications for mobile devices; Software for mobile phones; Communication software; Recorded computer software; Computer software for advertising; Computer software downloaded from the internet; Programs for computers; Computer programs for editing images, sound and video; Application software; Community software; Virtual reality software; Computer telephony software; Recorded computer programs; Software drivers; Screen savers; Electronic notebooks; Data processing equipment and accessories (electrical and mechanical); Information technology and audiovisual equipment; Communications equipment; Smartphones; Cell phones; Intercommunication apparatus; Telephone recorders; Wireless telephony apparatus; Video conferencing apparatus; Telephone intercom apparatus; Smartwatches; Telephone sets with screen and keyboard; Video communications apparatus; Electronic diaries.

Class 16: Passport cases; Printed matter; Posters; Appliques in the form of decals; Informational sheets; Booklets relating to games; Souvenir programmes; Printed certificates; Trade journals; General feature magazines; Poster magazines; Revolving circular charts; Business forms; Lithographic prints; Prints in the nature of pictures; Printed diagrams; Printed emblems; Printed informational folders; Printed teaching materials; Printed visuals; Printed training materials; Printed art reproductions; Printed patterns for costumes; Printed invitations; Paper emblems; Checkbook cases; Forms, printed; Blank forms; Collector's photographs of players; Unmounted and mounted photographs; Photographs [printed]; Comic strips; Gazetteers; Computer game instruction manuals; Calendars; 3D decals for use on any surface; Heat transfers; Adhesive transfers; Musical greeting cards; Social note cards; Thank you cards; Motivational cards; Holiday cards; Greeting cards; Collectable cards; Trading cards other than for games; Reference cards; Trading cards; Occasion cards; Caricatures; Collages; Comics; Archival storage pages; Road maps; Travel magazines; Stickers [decalcomanias]; Vehicle bumper stickers; Printed material in the nature of color samples; Reporters' notebooks; Art pictures; Prints; Color prints; Cartoon prints; Mounted posters; Iron-on transfers of paper; Paper hangtags; Placards of cardboard; Advertising posters; Printed plans; Postcards and picture postcards; Printed programmes; Events programmes; Prospectuses; Printed publications; Strategy guidebooks for video games; Handpainted paper wine bottle labels; Advertising signs of paper; Printed advertisements; Graphic reproductions; Graphic art reproductions; Pop-up greetings cards; Adhesive wall decorations of paper; Printed reports; Transfers [decalcomanias]; Knitting patterns; Sketches; Removable tattoos [decalcomania]; Temporary tattoos; Leaflets; Visiting cards; Wall charts; Paper patterns; Invitation cards; Postage stamps; Dry transfer characters; Flags of paper.

Class 18: Credit-card holders; Driving licence cases; Cases of imitation leather; Luggage, bags, wallets and other carriers; Umbrellas and parasols; Umbrellas; Bags for umbrellas; Covers for parasols; Umbrella covers; Briefbags; Luggage; Travel luggage; Purse frames; Handbag frames; Haversacks; Diplomatic bags; Banknote holders; Commutation-ticket holders; Card cases [notecases]; Keycases; Folio cases; Carrying cases for documents; Cosmetic purses; Trunks [luggage]; Trunks and suitcases; Traveling trunks; Clutch bags; Small rucksacks; Small purses; Small bags for men; Small clutch purses; Small suitcases; Game bags [hunting accessories]; Backpacks; Hat boxes for travel; Garment bags for travel; Kit bags; Travel garment covers; Wallets; Purses; Saddlebags; Gentlemen's handbags; Folding briefcases; Briefcases and attache cases; Portfolio cases [briefcases]; Music cases; Art portfolios [cases]; Attache cases; Bags; Textile shopping bags; Work bags; Bags for climbers; Bags for campers; Gym bags; Leather bags and wallets; Courier bags; Carriers for suits, shirts and dresses; Book bags; Wheeled bags; Tool bags, empty; Tool bags [empty] for motor cycles; Tool bags sold empty; Shoe bags; Bags for sports clothing; Hiking bags; Sling bags; Shopping bags; Souvenir bags; Beach bags; Holdalls; Carry-on bags; Carrying cases; Holdalls for sports clothing; Bags for sports; Handbags; Ladies' handbags; Travelling handbags; Valises; Suitcases; School knapsacks; All-purpose athletic bags; Travel cases; Portmanteaus; Duffel bags; Pouches; Travelling sets.

Class 20: Statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class.

Class 24: Bath linen, except clothing; Bath mitts; Bath sheets; Towels of textile; Bath towels; Beach towels; Textile fabrics for use in the manufacture of bedding.

Class 25: Headgear; Footwear; Clothing; Millinery; Berets; Caps [headwear]; Ski hats; Sports caps; Woolly hats; Visors; Bonnets [headwear]; Sun visors [headwear]; Beach hats; Flat caps; Children's headwear; Earbands; Thermal headgear; Sports headgear [other than helmets]; Infants' boots; Gym boots; Boots for sports; Winter boots; Walking shoes; Training shoes; Lace boots; Leather shoes; Canvas shoes; Flip-flops; Rubbers [footwear]; Casual footwear; Footwear for women; Footwear for men; Children's footwear; Mountaineering shoes; Boots for sports; Athletic shoes; Footwear not for sports; Sports shoes; Work shoes; Leisure shoes; Rainshoes; Slippers; Bath slippers; Sandals; Bath sandals; Sneakers; Insoles; Insoles for footwear; Snow boots; Neckwear; Neck scarfs [mufflers]; Leisurewear; Bandanas [neckerchiefs]; Bermuda shorts; Lingerie; Maternity lingerie; Ladies' underwear; Men's underwear; Disposable underwear; Nightwear; Underwear; Thermal underwear; Bikinis; Brassieres; Moisture-wicking sports bras; Blouses; Tracksuit tops; Sweat shirts; Cargo pants; Boxer shorts; Boleros; Jodhpurs; Head scarves; Kerchiefs [clothing]; Beach wraps; Donkey jackets; Sports caps and hats; Wind suits; Long johns; Long jackets; Knitwear [clothing]; Denim jeans; Dress pants; Aprons [clothing]; Pinafores; Suits; Women's suits; Men's suits; Leisure suits; Gaiters; Turtlenecks; Roll necks [clothing]; Bodices [lingerie]; Heavy coats; Slips [undergarments]; Petticoats; Caftans; Vests; Hoods [clothing]; Kilts; Kimonos; Overalls; Trunks; Snow suits; Balaclavas; Shirts and slips; Short sets [clothing]; Costumes; Bathing suits; Bathing costumes for women; Bathing suits for men; Halloween costumes; Dance costumes; Theatrical costumes; Shirts; Casual shirts; Nighties; Knit shirts; Moisture-wicking sports shirts; Short-sleeve shirts; Baby tops; Tank tops; Polo shirts; Sports shirts with short sleeves; Short-sleeved or long-sleeved t-shirts; Tee-shirts; Printed t-shirts; Neckties; Crop tops; Short petticoats; Shortalls; Baby doll pyjamas; Short trousers; Jackets [clothing]; Sleeveless jackets; Sweatjackets; Down jackets; Light-reflecting jackets; Ski jackets; Snowboard jackets; Sports jackets; Cagoules; Shell jackets; Leggings [trousers]; Sunsuits; Sundresses; Underpants; Panties; Babies' pants [clothing]; Miniskirts; Muffs [clothing]; School uniforms; Uniforms; Union suits; Coats for men; Men's and women's jackets, coats, trousers, vests; Knee warmers [clothing]; Neck tubes; Body warmers; Heavy jackets; Maternity clothing; Loungewear; Ladies' clothing; Boys' clothing; Children's wear; Girls' clothing; Denims [clothing]; Gym suits; Ready-made clothing; Menswear; Rainproof clothing; Weatherproof clothing; Work clothes; Sportswear; Windproof clothing; Evening wear; Sweatbands; Mantles; Overcoats; Rompers; Pelerines; Capes; Cloaks; Pelisses; Stuff jackets [clothing]; Pajamas (Am.); Coats; Pop socks; Undershirts; Sports singlets; Robes; Braces for clothing [suspenders]; Coats for women; Bathrobes; Beach robes; Raincoats; Winter coats; Fleeces; Ponchos; Stockings; Dust coats; Pullovers; Mock turtleneck shirts; Tights; Footless tights; Athletic tights; Bib tights; Pedal pushers; Ski gloves; Gloves [clothing]; Gloves including those made of skin, hide or fur; Snowboard mittens; Knitted gloves; Winter gloves; Saris; Sarongs; Socks; Men's socks; Anti-perspirant socks; Sports socks; Pants; Dinner suits; Trousers shorts; Boxing shorts; Swimming trunks; Baby bunting [clothing]; Playsuits [clothing]; Trousers; Tracksuit bottoms; Gauchos; Skirts; Sports pants; Over-trousers; Sports bras; Thongs; Ballet suits; Ladies' dresses; Sweaters; Shawls; Mufflers [clothing]; Lounging robes; Shorts; Gym shorts; Sweat shorts; Boardshorts; Oilskins [clothing]; Short-sleeved T-shirts; Tops [clothing]; Warm-up tops; Trench coats; Coverups; Martial arts uniforms; Casualwear; Woollen tights; Windshirts; Hosiery; Morning coats; Knit jackets.

2. European Union trade mark application No 15 038 714 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 038 714 for the figurative mark . The opposition is based on, inter alia, European trade mark registration No 14 989 024 for the figurative mark . The opponent invoked Article 8(1)(a) and (b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European trade mark registration No 14 989 024.

1. The goods

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

Class 3: Toiletries; Cleaning and fragrancing preparations; Tailors' and cobblers' wax; Essential oils and aromatic extracts.

Class 9: Recorded content; Media content; Electronic publications recorded on computer media; Downloadable image files; Electronic publications, downloadable; Exposed film; Downloadable computer graphics; Downloadable publications; Audio visual recordings; Databases (electronic); Software.

Class 14: Gemstones, pearls and precious metals, and imitations thereof; Jewels; Jewellery boxes and watch boxes; Time instruments; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Decorative boxes made of precious metal; Key fobs of precious metals; Commemorative shields; Prize cups of precious metals; Works of art of precious metal; Objet d'art made of precious stones; Objet d'art of enamelled gold; Objet d'art of enamelled silver; Key charms coated with precious metals; Trinkets coated with precious metal; Key rings [trinkets or fobs]; Key rings [trinkets or fobs] of precious metal; Silver objets d'art.

Class 18: Luggage, bags, wallets and other carriers; Umbrellas and parasols; Saddlery, whips and animal apparel; Walking sticks; Worked or semi-worked hides and other leather; Leather cloth; Leather for shoes; Leather and imitation leather; Leather, unworked or semi-worked; Moleskin [imitation of leather]; Semi-worked fur.

Class 21: Brushes and brush-making articles; Cleaning articles; Shoe horns; Shoe polishing mitts; Shoe shine cloths; Wax-polishing appliances, non-electric, for shoes; Shoe cloths; Shoe scrapers incorporating brushes; Shoe trees; Boot jacks; Boot trees [stretchers]; Clothes brushes.

Class 25: Footwear; Clothing; Headgear.

Class 26: Accessories for apparel, sewing articles and decorative textile articles; Decorative articles for the hair; Hair fasteners.

The contested goods are the following:

Class 9: Cases for diskettes; Cases for smartphones; DVD cases; Cases for pocket calculators; Covers for MP3 players; Holders for compact discs; Cases for sunglasses; Cases for children's eye glasses; Eyewear cases; Leather cases for mobile phones; Covers for digital media players; Covers for portable media players; Containers for contact lenses; Flip covers for smart phones; Credit card cases [fitted holders]; Covers for music storage devices; Covers for data storage devices; Carrying cases for digital music players; Cases for spectacles and sunglasses; Spectacle cases; Recorded content; Recorded tapes; Magnetic recordings; Prerecorded magnetic data carriers; Holograms; Holographic film; Telephone ring tones [downloadable]; Optical disc recordings; Software; Media content; Computer software applications, downloadable; Downloadable applications for use with mobile devices; Freeware; Interfaces for computers; Computer application software; Computer graphics software; Computer application software for mobile telephones; Computer game software downloadable from a global computer network; Music-composition software; Downloadable software; Software for processing digital images; Software and applications for mobile devices; Software for mobile phones; Communication software; Recorded computer software; Computer software for advertising; Computer software downloaded from the internet; Programs for computers; Computer programs for editing images, sound and video; Application software; Community software; Virtual reality software; Computer telephony software; Recorded computer programs; Software drivers; Screen savers; E-books; Downloadable movies; Downloadable graphics for mobile phones; Downloadable computer graphics; Interactive DVDs; Audio books; Talking books; Downloadable electronic books; Musical sound recordings; Downloadable musical sound recordings; Musical video recordings; Downloadable digital music; Prerecorded videodiscs; Recorded tape cassettes; Prerecorded video cassettes featuring cartoons; Prerecorded video cassettes featuring music; Prerecorded CD-ROMs; Prerecorded CD-Is; Pre-recorded DVDs featuring music; Prerecorded exercise DVDs; Prerecorded fitness DVDs; Prerecorded music compact discs; Prerecorded audio tapes featuring music; Audio recordings; Prerecorded video tapes featuring music; Audio visual recordings; Musical recordings in the form of discs; Tape recordings of music; Prerecorded motion picture videos; Prerecorded music videos; Holographic images; Multimedia software recorded on CD-ROM; Downloadable image files; Downloadable music files; Records [sound recordings]; Compact discs featuring music; Recorded discs bearing sound; Recorded discs bearing images; Video disks with recorded animated cartoons; Transparent films [photographic, exposed] for overhead projectors; Electronic publications recorded on computer media; Electronic publications, downloadable; Downloadable publications; Video tapes with recorded animated cartoons; Downloadable printable planners and organizers; Pre-recorded audio tapes; Pre-recorded videos; Series of musical sound recordings; Selfie sticks used as smartphone accessories; Data processing equipment and accessories (electrical and mechanical); Information technology and audiovisual equipment; Communications equipment; Beeper carrying cases; Cases for telephones; Cases adapted for mobile phones; Phone covers [specifically adapted]; Smartphones; Docking stations for mobile phones; Stands adapted for mobile phones; Telephone earpieces; Cell phones; Hands-free holders for cell phones; Dashboard mounts for mobile phones; Holders adapted for mobile phones; In-car telephone handset cradles; Intercommunication apparatus; Telephone recorders; Wireless telephony apparatus; Video conferencing apparatus; Devices for hands-free use of mobile phones; Telephone intercom apparatus; Phone plugs; Anti-dust plugs for cell phones; Anti-dust plugs for charger ports; Smartwatches; Hands-free headsets for cell phones; Hands free kits for phones; Telephone sets with screen and keyboard; Telephone connectors; Adapters for connecting telephones to hearing aids; Video communications apparatus; Signal cables for IT, AV and telecommunication; Electronic diaries; Electronic notebooks; Cases for electronic diaries; Keyboards; Multifunction keyboards; Prerecorded data carriers for use with computers.

Class 16: Gift cases for writing instruments; Passport cases; Pouches for writing instruments; Printed matter; Stationery and educational supplies; Posters; Appliques in the form of decals; Informational sheets; Booklets relating to games; Souvenir programmes; Printed certificates; Trade journals; General feature magazines; Poster magazines; Revolving circular charts; Business forms; Lithographic prints; Prints in the nature of pictures; Printed diagrams; Printed emblems; Printed informational folders; Printed teaching materials; Printed visuals; Printed training materials; Printed art reproductions; Printed patterns for costumes; Printed invitations; Paper emblems; Checkbook cases; Forms, printed; Blank forms; Collector's photographs of players; Unmounted and mounted photographs; Photographs [printed]; Comic strips; Gazetteers; Computer game instruction manuals; Calendars; 3D decals for use on any surface; Heat transfers; Adhesive transfers; Musical greeting cards; Social note cards; Thank you cards; Motivational cards; Holiday cards; Greeting cards; Collectable cards; Trading cards other than for games; Reference cards; Trading cards; Occasion cards; Caricatures; Collages; Comics; Archival storage pages; Road maps; Travel magazines; Stickers [decalcomanias]; Vehicle bumper stickers; Printed material in the nature of color samples; Reporters' notebooks; Art pictures; Prints; Color prints; Cartoon prints; Mounted posters; Iron-on transfers of paper; Paper hangtags; Placards of cardboard; Advertising posters; Printed plans; Postcards and picture postcards; Printed programmes; Events programmes; Prospectuses; Printed publications; Strategy guidebooks for video games; Handpainted paper wine bottle labels; Advertising signs of paper; Printed advertisements; Graphic reproductions; Graphic art reproductions; Pop-up greetings cards; Adhesive wall decorations of paper; Printed reports; Transfers [decalcomanias]; Knitting patterns; Sketches; Removable tattoos [decalcomania]; Temporary tattoos; Leaflets; Visiting cards; Wall charts; Paper patterns; Invitation cards; Postage stamps; Dry transfer characters; Printing and bookbinding equipment; Office stationery; Adhesive foils stationery; Plastic labels; Labels, not of textile; Shipping labels; Map cases; Stickers [stationery]; Adhesive printed labels; Table linen of paper; Flags of paper; Tissues; Toilet paper; Paper tissues; Tablecloths of paper; Paper towels.

Class 18: Credit-card holders; Driving licence cases; Cases of imitation leather; Luggage, bags, wallets and other carriers; Umbrellas and parasols; Umbrellas; Bags for umbrellas; Covers for parasols; Umbrella covers; Briefbags; Luggage; Travel luggage; Purse frames; Handbag frames; Haversacks; Diplomatic bags; Banknote holders; Commutation-ticket holders; Card cases [notecases]; Keycases; Folio cases; Carrying cases for documents; Cosmetic purses; Trunks [luggage]; Trunks and suitcases; Traveling trunks; Clutch bags; Small rucksacks; Small purses; Small bags for men; Small clutch purses; Small suitcases; Game bags [hunting accessories]; Backpacks; Hat boxes for travel; Garment bags for travel; Kit bags; Travel garment covers; Wallets; Purses; Saddlebags; Gentlemen's handbags; Folding briefcases; Briefcases and attache cases; Portfolio cases [briefcases]; Music cases; Art portfolios [cases]; Attache cases; Bags; Textile shopping bags; Work bags; Bags for climbers; Bags for campers; Gym bags; Leather bags and wallets; Courier bags; Carriers for suits, shirts and dresses; Book bags; Wheeled bags; Tool bags, empty; Tool bags [empty] for motor cycles; Tool bags sold empty; Shoe bags; Bags for sports clothing; Hiking bags; Sling bags; Shopping bags; Souvenir bags; Beach bags; Holdalls; Carry-on bags; Carrying cases; Holdalls for sports clothing; Bags for sports; Handbags; Ladies' handbags; Travelling handbags; Valises; Suitcases; School knapsacks; All-purpose athletic bags; Travel cases; Portmanteaus; Duffel bags; Pouches; Travelling sets.

Class 20: Statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class; Glass for use in framing art; Furniture and furnishings; Mirrors (silvered glass); Frames; Beds, bedding, mattresses, pillows and cushions; Clothes organisers; Cocktail units [furniture]; Desks; Desks and tables; Furniture parts; Armchairs; Office armchairs; Rocking chairs; Contour chairs; Divans; Settees; Chests of drawers; Consoles [furniture]; Sideboards; Dressers; Chairs being office furniture; Deck chairs; Mirror stands; Furniture; Benches with shelves; Bench tables; Benches [furniture]; Beach beds; Living room furniture; Seating furniture; Indoor furniture; Household furniture; Wooden furniture; Lawn furniture; Bathroom furniture; Furniture made of rattan; Leather furniture; Upholstered furniture; Transformable furniture; Lounge furniture; Glass furniture; Furniture units; Inflatable furniture; Corner units [furniture]; Ottomans; Screens [furniture]; Footrests; Chair pads; Armrests; Covers for clothing [wardrobe]; Office shelving; Floating inflatable seats; Flower-pot pedestals; Shoe racks; Hanging storage racks [furniture]; Wall shelves furniture; Baby changing platforms; Pouffes [furniture]; Bean bags; Racks; Reclining armchairs; Dish cabinets; Seats; Chests; Sofas; Coffee tables; Tables; Tables [furniture]; Cupboard units; Furniture cabinets; Cupboards being furniture; Cupboards fitted with mirrors; Chaise longues; Stools; Dressing tables; Vitrines; Trolleys [furniture]; Inflatable headrests; Head-rests [furniture]; Bedding, except linen; Cushions; Inflatable pillows; Cushions (upholstery); Mattress cushions; Seat cushions; Stuffed pillows.

Class 24: Textile goods, and substitutes for textile goods; Bed clothes and blankets; Waterproof bed clothes; Disposable bedding of paper; Disposable bedding of textile; Bed canopies; Infants' bed linen; Bed covers of paper; Quilts; Bed linen and table linen; Linens; Textile goods for use as bedding; Sleeping bags [sheeting]; Bed linen made of non-woven textile material; Textile fabrics for use in the manufacture of bedding; Bath linen, except clothing; Table linen, not of paper; Diapered linen; Table runners; Brocades; Oilcloth for use as tablecloths; Bed blankets; Bed throws; Lap rugs; Cushion covers; Bath mitts; Table napkins of textile; Tablecloths, not of paper; Banners; Shower curtains of textile or plastic; Table linen; Kitchen linen; Napery of textile; Lingerie fabric; Textile smallwares [table linen]; Kitchen and table linens; Household linen, including face towels; Streamers of textile; Plastic pennants; Textile flags used for place settings; Handkerchiefs; Handkerchiefs of textile; Table covers; Textile tablecloths; Disposable tablecloths of textile; Table covers of non-woven textile fabrics; Duvet covers; Shams; Paper pillowcases; Cushion covering materials; Pillowcases; Sheets [textile]; Bath sheets; Bed sheets of paper; Sleeping bag liners; Towels of textile; Bath towels; Beach towels.

Class 25: Headgear; Footwear; Clothing; Millinery; Berets; Caps [headwear]; Ski hats; Sports caps; Woolly hats; Visors; Bonnets [headwear]; Sun visors [headwear]; Beach hats; Flat caps; Children's headwear; Earbands; Thermal headgear; Sports headgear [other than helmets]; Infants' boots; Gym boots; Boots for sports; Winter boots; Walking shoes; Training shoes; Lace boots; Leather shoes; Canvas shoes; Flip-flops; Rubbers [footwear]; Casual footwear; Footwear for women; Footwear for men; Children's footwear; Mountaineering shoes; Boots for sports; Athletic shoes; Footwear not for sports; Sports shoes; Work shoes; Leisure shoes; Rainshoes; Slippers; Bath slippers; Sandals; Bath sandals; Sneakers; Insoles; Insoles for footwear; Snow boots; Neckwear; Neck scarfs [mufflers]; Leisurewear; Bandanas [neckerchiefs]; Bermuda shorts; Lingerie; Maternity lingerie; Ladies' underwear; Men's underwear; Disposable underwear; Nightwear; Underwear; Thermal underwear; Bikinis; Brassieres; Moisture-wicking sports bras; Blouses; Tracksuit tops; Sweat shirts; Cargo pants; Boxer shorts; Boleros; Jodhpurs; Head scarves; Kerchiefs [clothing]; Beach wraps; Donkey jackets; Sports caps and hats; Wind suits; Long johns; Long jackets; Knitwear [clothing]; Denim jeans; Dress pants; Aprons [clothing]; Pinafores; Suits; Women's suits; Men's suits; Leisure suits; Gaiters; Turtlenecks; Roll necks [clothing]; Bodices [lingerie]; Heavy coats; Slips [undergarments]; Petticoats; Caftans; Vests; Hoods [clothing]; Kilts; Kimonos; Overalls; Trunks; Snow suits; Balaclavas; Shirts and slips; Short sets [clothing]; Costumes; Bathing suits; Bathing costumes for women; Bathing suits for men; Halloween costumes; Dance costumes; Theatrical costumes; Shirts; Casual shirts; Nighties; Knit shirts; Moisture-wicking sports shirts; Short-sleeve shirts; Baby tops; Tank tops; Polo shirts; Sports shirts with short sleeves; Short-sleeved or long-sleeved t-shirts; Tee-shirts; Printed t-shirts; Neckties; Crop tops; Short petticoats; Shortalls; Baby doll pyjamas; Short trousers; Jackets [clothing]; Sleeveless jackets; Sweatjackets; Down jackets; Light-reflecting jackets; Ski jackets; Snowboard jackets; Sports jackets; Cagoules; Shell jackets; Leggings [trousers]; Sunsuits; Sundresses; Underpants; Panties; Babies' pants [clothing]; Miniskirts; Muffs [clothing]; School uniforms; Uniforms; Union suits; Coats for men; Men's and women's jackets, coats, trousers, vests; Knee warmers [clothing]; Neck tubes; Body warmers; Heavy jackets; Maternity clothing; Loungewear; Ladies' clothing; Boys' clothing; Children's wear; Girls' clothing; Denims [clothing]; Gym suits; Ready-made clothing; Menswear; Rainproof clothing; Weatherproof clothing; Work clothes; Sportswear; Windproof clothing; Evening wear; Sweatbands; Mantles; Overcoats; Rompers; Pelerines; Capes; Cloaks; Pelisses; Stuff jackets [clothing]; Pajamas (Am.); Coats; Pop socks; Undershirts; Sports singlets; Robes; Braces for clothing [suspenders]; Coats for women; Bathrobes; Beach robes; Raincoats; Winter coats; Fleeces; Ponchos; Stockings; Dust coats; Pullovers; Mock turtleneck shirts; Tights; Footless tights; Athletic tights; Bib tights; Pedal pushers; Ski gloves; Gloves [clothing]; Gloves including those made of skin, hide or fur; Snowboard mittens; Knitted gloves; Winter gloves; Saris; Sarongs; Socks; Men's socks; Anti-perspirant socks; Sports socks; Pants; Dinner suits; Trousers shorts; Boxing shorts; Swimming trunks; Baby bunting [clothing]; Playsuits [clothing]; Trousers; Tracksuit bottoms; Gauchos; Skirts; Sports pants; Over-trousers; Sports bras; Thongs; Ballet suits; Ladies' dresses; Sweaters; Shawls; Mufflers [clothing]; Lounging robes; Shorts; Gym shorts; Sweat shorts; Boardshorts; Oilskins [clothing]; Short-sleeved T-shirts; Tops [clothing]; Warm-up tops; Trench coats; Coverups; Martial arts uniforms; Casualwear; Woollen tights; Windshirts; Hosiery; Morning coats; Knit jackets.

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

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

Recorded content; Media content; Electronic publications recorded on computer media; Downloadable image files; Electronic publications, downloadable; Downloadable computer graphics; Downloadable publications; Audio visual recordings; Software are identically contained in both lists of goods (including synonyms).

The contested Recorded tapes; Magnetic recordings; Prerecorded magnetic data carriers; Holograms; Holographic film; Telephone ring tones [downloadable]; Optical disc recordings; E-books; Downloadable movies; Downloadable graphics for mobile phones; Interactive DVDs; Audio books; Talking books; Downloadable electronic books; Musical sound recordings; Downloadable musical sound recordings; Musical video recordings; Downloadable digital music; Prerecorded videodiscs; Recorded tape cassettes; Prerecorded video cassettes featuring cartoons; Prerecorded video cassettes featuring music; Prerecorded CD-ROMs; Prerecorded CD-Is; Pre-recorded DVDs featuring music; Prerecorded exercise DVDs; Prerecorded fitness DVDs; Prerecorded music compact discs; Prerecorded audio tapes featuring music; Audio recordings; Prerecorded video tapes featuring music; Musical recordings in the form of discs; Tape recordings of music; Prerecorded motion picture videos; Prerecorded music videos; Holographic images; Multimedia software recorded on CD-ROM; Downloadable music files; Records [sound recordings]; Compact discs featuring music; Recorded discs bearing sound; Recorded discs bearing images; Video disks with recorded animated cartoons; Transparent films [photographic, exposed] for overhead projectors; Video tapes with recorded animated cartoons; Downloadable printable planners and organizers; Pre-recorded audio tapes; Pre-recorded videos; Series of musical sound; Prerecorded data carriers for use with computers recordings are included in the broad categories of the opponent’s Recorded content; Media content. Therefore, they are identical.

The contested Computer software applications, downloadable; Downloadable applications for use with mobile devices; Freeware; Interfaces for computers; Computer application software; Computer graphics software; Computer application software for mobile telephones; Computer game software downloadable from a global computer network; Music-composition software; Downloadable software; Software for processing digital images; Software and applications for mobile devices; Software for mobile phones; Communication software; Recorded computer software; Computer software for advertising; Computer software downloaded from the internet; Programs for computers; Computer programs for editing images, sound and video; Application software; Community software; Virtual reality software; Computer telephony software; Recorded computer programs; Software drivers; Screen savers are included in the broad category of the opponent’s software. Therefore, they are identical.

The contested Data processing equipment and accessories (electrical and mechanical); Information technology and audiovisual equipment; Communications equipment; Smartphones; Cell phones; Intercommunication apparatus; Telephone recorders; Wireless telephony apparatus; Video conferencing apparatus; Telephone intercom apparatus; Smartwatches; Telephone sets with screen and keyboard; Video communications apparatus; Electronic diaries; Electronic notebooks and the opponent’s software can coincide in producer, end user and distribution channels. Furthermore they are complementary. Therefore, the goods are similar.

However, the remaining contested goods Cases for diskettes; Cases for smartphones; DVD cases; Cases for pocket calculators; Covers for MP3 players; Holders for compact discs; Cases for sunglasses; Cases for children's eye glasses; Eyewear cases; Leather cases for mobile phones; Covers for digital media players; Covers for portable media players; Containers for contact lenses; Flip covers for smart phones; Credit card cases [fitted holders]; Covers for music storage devices; Covers for data storage devices; Carrying cases for digital music players; Cases for spectacles and sunglasses; Spectacle cases; Selfie sticks used as smartphone accessories; Beeper carrying cases; Cases for telephones; Cases adapted for mobile phones; Phone covers [specifically adapted]; Docking stations for mobile phones; Stands adapted for mobile phones; Telephone earpieces; Hands-free holders for cell phones; Dashboard mounts for mobile phones; Holders adapted for mobile phones; In-car telephone handset cradles; Devices for hands-free use of mobile phones; Phone plugs; Anti-dust plugs for cell phones; Anti-dust plugs for charger ports; Hands-free headsets for cell phones; Hands free kits for phones; Telephone connectors; Adapters for connecting telephones to hearing aids; Signal cables for IT, AV and telecommunication; Cases for electronic diaries; Keyboards; Multifunction keyboards; are either specific cases and covers or peripherals and accessories for various IT and communication devices. They have a different purpose than the opponent’s goods which are recorded content and software. The goods do not coincide in their producers and end user. Furthermore, they are not necessarily complementary. Therefore, they are considered dissimilar.

They same finding applies for the same reasons also in relation to the opponent’s remaining goods which are toiletries and cleaning preparations (Class 3), jewellery and goods made of precious metals (Class 14), luggage, bags, umbrellas and leather and leather products (Class 18), household utensils (Class 21), clothing, footwear, headgear (Class 25) and Lace and embroidery and hair decorations (Class 26). The goods do not coincide in producers, distribution channels or end users.

Contested goods in Class 16

The greatest part of the contested goods are printed matters, namely Passport cases; Printed matter; Posters; Appliques in the form of decals; Informational sheets; Booklets relating to games; Souvenir programmes; Printed certificates; Trade journals; General feature magazines; Poster magazines; Revolving circular charts; Business forms; Lithographic prints; Prints in the nature of pictures; Printed diagrams; Printed emblems; Printed informational folders; Printed teaching materials; Printed visuals; Printed training materials; Printed art reproductions; Printed patterns for costumes; Printed invitations; Paper emblems; Checkbook cases; Forms, printed; Blank forms; Collector's photographs of players; Unmounted and mounted photographs; Photographs [printed]; Comic strips; Gazetteers; Computer game instruction manuals; Calendars; 3D decals for use on any surface; Heat transfers; Adhesive transfers; Musical greeting cards; Social note cards; Thank you cards; Motivational cards; Holiday cards; Greeting cards; Collectable cards; Trading cards other than for games; Reference cards; Trading cards; Occasion cards; Caricatures; Collages; Comics; Archival storage pages; Road maps; Travel magazines; Stickers [decalcomanias]; Vehicle bumper stickers; Printed material in the nature of color samples; Reporters' notebooks; Art pictures; Prints; Color prints; Cartoon prints; Mounted posters; Iron-on transfers of paper; Paper hangtags; Placards of cardboard; Advertising posters; Printed plans; Postcards and picture postcards; Printed programmes; Events programmes; Prospectuses; Printed publications; Strategy guidebooks for video games; Handpainted paper wine bottle labels; Advertising signs of paper; Printed advertisements; Graphic reproductions; Graphic art reproductions; Pop-up greetings cards; Adhesive wall decorations of paper; Printed reports; Transfers [decalcomanias]; Knitting patterns; Sketches; Removable tattoos [decalcomania]; Temporary tattoos; Leaflets; Visiting cards; Wall charts; Paper patterns; Invitation cards; Postage stamps; Dry transfer characters; Flags of paper.

There is a close connection between printed matters and the opponent’s recorded content and media content in Class 9 as they have the same purpose. They can coincide in producer and end user. Furthermore they are in competition. Therefore, the goods are similar.

However, this is not the case with the remaining contested Gift cases for writing instruments; Pouches for writing instruments; Stationery and educational supplies; Printing and bookbinding equipment; Office stationery; Adhesive foils stationery; Plastic labels; Labels, not of textile; Shipping labels; Map cases; Stickers [stationery]; Adhesive printed labels; Table linen of paper; Tissues; Toilet paper; Paper tissues; Tablecloths of paper; Paper towels which are stationery, printing equipment or (disposable) paper products. The goods do not coincide in their producers and end user. Furthermore, they are not necessarily complementary. Therefore, they are considered dissimilar.

They same finding applies for the same reasons also in relation to the opponent’s remaining goods in Class 9 and in the other classes, which are toiletries and cleaning preparations (Class 3), jewellery and goods made of precious metals (Class 14), luggage, bags, umbrellas and leather and leather products (Class 18), household utensils (Class 21), clothing, footwear, headgear (Class 25) and Lace and embroidery and hair decorations (Class 26). The goods do not coincide in producers, distribution channels or end users.

Contested goods in Class 18

Luggage, bags, wallets (listed twice) and other carriers; Umbrellas and parasols; Umbrellas; are identically contained in both lists of goods.

The contested Credit-card holders; Driving licence cases; Cases of imitation leather; Briefbags; Travel luggage; Purse frames; Handbag frames; Haversacks; Diplomatic bags; Banknote holders; Commutation-ticket holders; Card cases [notecases]; Keycases; Folio cases; Carrying cases for documents; Cosmetic purses; Trunks [luggage]; Trunks and suitcases; Traveling trunks; Clutch bags; Small rucksacks; Small purses; Small bags for men; Small clutch purses; Small suitcases; Game bags [hunting accessories]; Backpacks; Hat boxes for travel; Garment bags for travel; Kit bags; Travel garment covers; Purses; Saddlebags; Gentlemen's handbags; Folding briefcases; Briefcases and attache cases; Portfolio cases [briefcases]; Music cases; Art portfolios [cases]; Attache cases; Textile shopping bags; Work bags; Bags for climbers; Bags for campers; Gym bags; Leather bags and wallets; Courier bags; Carriers for suits, shirts and dresses; Book bags; Wheeled bags; Tool bags, empty; Tool bags [empty] for motor cycles; Tool bags sold empty; Shoe bags; Bags for sports clothing; Hiking bags; Sling bags; Shopping bags; Souvenir bags; Beach bags; Holdalls; Carry-on bags; Carrying cases; Holdalls for sports clothing; Bags for sports; Handbags; Ladies' handbags; Travelling handbags; Valises; Suitcases; School knapsacks; All-purpose athletic bags; Travel cases; Portmanteaus; Duffel bags; Pouches; Travelling sets are included in the broad category of the opponent’s Luggage, bags, wallets and other carriers. Therefore, they are identical.

The contested Bags for umbrellas; Covers for parasols; Umbrella covers and the opponent’s umbrellas and parasols can coincide in producer, end user and distribution channels. Furthermore they are complementary. Therefore, the goods are similar.

The contested Purse frames; Handbag frames and the opponent’s wallets and bags can coincide in producer, end user and distribution channels. Furthermore they are complementary. Therefore, the goods are similar.

Contested goods in Class 20

The main difference between the contested Statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class; and the opponent’s Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Decorative boxes made of precious metal; Works of art of precious metal in Class 14 is the material of which they are made. However, the goods coincide in their purpose and nature, since both are used for ornamental and decoration purposes. Furthermore, the may coincide in producers and end user. Finally, they are in competition. Therefore, the goods are similar.

The remaining contested Glass for use in framing art; Furniture and furnishings; Mirrors (silvered glass); Frames; Beds, bedding, mattresses, pillows and cushions; Clothes organisers; Cocktail units [furniture]; Desks; Desks and tables; Furniture parts; Armchairs; Office armchairs; Rocking chairs; Contour chairs; Divans; Settees; Chests of drawers; Consoles [furniture]; Sideboards; Dressers; Chairs being office furniture; Deck chairs; Mirror stands; Furniture; Benches with shelves; Bench tables; Benches [furniture]; Beach beds; Living room furniture; Seating furniture; Indoor furniture; Household furniture; Wooden furniture; Lawn furniture; Bathroom furniture; Furniture made of rattan; Leather furniture; Upholstered furniture; Transformable furniture; Lounge furniture; Glass furniture; Furniture units; Inflatable furniture; Corner units [furniture]; Ottomans; Screens [furniture]; Footrests; Chair pads; Armrests; Covers for clothing [wardrobe]; Office shelving; Floating inflatable seats; Flower-pot pedestals; Shoe racks; Hanging storage racks [furniture]; Wall shelves furniture; Baby changing platforms; Pouffes [furniture]; Bean bags; Racks; Reclining armchairs; Dish cabinets; Seats; Chests; Sofas; Coffee tables; Tables; Tables [furniture]; Cupboard units; Furniture cabinets; Cupboards being furniture; Cupboards fitted with mirrors; Chaise longues; Stools; Dressing tables; Vitrines; Trolleys [furniture]; Inflatable headrests; Head-rests [furniture]; Bedding, except linen; Cushions; Inflatable pillows; Cushions (upholstery); Mattress cushions; Seat cushions; Stuffed pillows are furniture, mirrors and picture frames. They have nothing in common with the opponent’s goods which are toiletries and cleaning preparations (Class 3) recorded content and software (Class 9), jewellery and goods made of precious metals (Class 14), luggage, bags, umbrellas and leather and leather products (Class 18), household utensils (Class 21), clothing, footwear, headgear (Class 25) and Lace and embroidery and hair decorations (Class 26). The goods do not coincide in producers, distribution channels or end users. They are dissimilar.

Contested goods in Class 24

The contested Bath linen, except clothing; Bath mitts; Bath sheets; Towels of textile; Bath towels; Beach towels are all bath linen. The opponent’s Luggage, bags, wallets and other carriers in Class 18 include inter alia bags for sports. There is a certain common point between bath linen and bags for sports, since those goods can coincide in producer, end user and distribution channels. Therefore, they are similar.

The contested Textile fabrics for use in the manufacture of bedding and the opponent’s leather and imitation leather in Class 18 can have the same purpose. They can coincide in end user. Furthermore they are in competition. Therefore, the goods are similar.

The remaining contested Textile goods, and substitutes for textile goods; Bed clothes and blankets; Waterproof bed clothes; Disposable bedding of paper; Disposable bedding of textile; Bed canopies; Infants' bed linen; Bed covers of paper; Quilts; Bed linen and table linen; Linens; Textile goods for use as bedding; Sleeping bags [sheeting]; Bed linen made of non-woven textile material; Textile fabrics for use in the manufacture of bedding; Table linen, not of paper; Diapered linen; Table runners; Brocades; Oilcloth for use as tablecloths; Bed blankets; Bed throws; Lap rugs; Cushion covers; Table napkins of textile; Tablecloths, not of paper; Banners; Shower curtains of textile or plastic; Table linen; Kitchen linen; Napery of textile; Lingerie fabric; Textile smallwares [table linen]; Kitchen and table linens; Household linen, including face towels; Streamers of textile; Plastic pennants; Textile flags used for place settings; Handkerchiefs; Handkerchiefs of textile; Table covers; Textile tablecloths; Disposable tablecloths of textile; Table covers of non-woven textile fabrics; Duvet covers; Shams; Paper pillowcases; Cushion covering materials; Pillowcases; Sheets [textile]; Bed sheets of paper; Sleeping bag liners; are all textile goods, household linen and shower curtains. They have nothing in common with the opponent’s goods which are toiletries and cleaning preparations (Class 3) recorded content and software (Class 9), jewellery and goods made of precious metals (Class 14), luggage, bags, umbrellas and leather and leather products (Class 18), household utensils (Class 21), clothing, footwear, headgear (Class 25) and Lace and embroidery and hair decorations (Class 26). The goods do not coincide in producers, distribution channels or end users. They are dissimilar

Contested goods in Class 25

Headgear; Footwear; Clothing; are identically contained in both lists of goods.

The contested Millinery; Berets; Caps [headwear]; Ski hats; Sports caps; Woolly hats; Visors; Bonnets [headwear]; Sun visors [headwear]; Beach hats; Flat caps; Children's headwear; Earbands; Thermal headgear; Sports headgear [other than helmets]; Sports caps and hats; are included in the broad category of the opponent’s Headgear. Therefore, they are identical.

The contested Infants' boots; Gym boots; Boots for sports; Winter boots; Walking shoes; Training shoes; Lace boots; Leather shoes; Canvas shoes; Flip-flops; Rubbers [footwear]; Casual footwear; Footwear for women; Footwear for men; Children's footwear; Mountaineering shoes; Boots for sports; Athletic shoes; Footwear not for sports; Sports shoes; Work shoes; Leisure shoes; Rainshoes; Slippers; Bath slippers; Sandals; Bath sandals; Sneakers; Snow boots are included in the broad category of the opponent’s Footwear. Therefore, they are identical.

The contested Neckwear; Neck scarfs [mufflers]; Leisurewear; Bandanas [neckerchiefs]; Bermuda shorts; Lingerie; Maternity lingerie; Ladies' underwear; Men's underwear; Disposable underwear; Nightwear; Underwear; Thermal underwear; Bikinis; Brassieres; Moisture-wicking sports bras; Blouses; Tracksuit tops; Sweat shirts; Cargo pants; Boxer shorts; Boleros; Jodhpurs; Head scarves; Kerchiefs [clothing]; Beach wraps; Donkey jackets; Wind suits; Long johns; Long jackets; Knitwear [clothing]; Denim jeans; Dress pants; Aprons [clothing]; Pinafores; Suits; Women's suits; Men's suits; Leisure suits; Gaiters; Turtlenecks; Roll necks [clothing]; Bodices [lingerie]; Heavy coats; Slips [undergarments]; Petticoats; Caftans; Vests; Hoods [clothing]; Kilts; Kimonos; Overalls; Trunks; Snow suits; Balaclavas; Shirts and slips; Short sets [clothing]; Costumes; Bathing suits; Bathing costumes for women; Bathing suits for men; Halloween costumes; Dance costumes; Theatrical costumes; Shirts; Casual shirts; Nighties; Knit shirts; Moisture-wicking sports shirts; Short-sleeve shirts; Baby tops; Tank tops; Polo shirts; Sports shirts with short sleeves; Short-sleeved or long-sleeved t-shirts; Tee-shirts; Printed t-shirts; Neckties; Crop tops; Short petticoats; Shortalls; Baby doll pyjamas; Short trousers; Jackets [clothing]; Sleeveless jackets; Sweatjackets; Down jackets; Light-reflecting jackets; Ski jackets; Snowboard jackets; Sports jackets; Cagoules; Shell jackets; Leggings [trousers]; Sunsuits; Sundresses; Underpants; Panties; Babies' pants [clothing]; Miniskirts; Muffs [clothing]; School uniforms; Uniforms; Union suits; Coats for men; Men's and women's jackets, coats, trousers, vests; Knee warmers [clothing]; Neck tubes; Body warmers; Heavy jackets; Maternity clothing; Loungewear; Ladies' clothing; Boys' clothing; Children's wear; Girls' clothing; Denims [clothing]; Gym suits; Ready-made clothing; Menswear; Rainproof clothing; Weatherproof clothing; Work clothes; Sportswear; Windproof clothing; Evening wear; Sweatbands; Mantles; Overcoats; Rompers; Pelerines; Capes; Cloaks; Pelisses; Stuff jackets [clothing]; Pajamas (Am.); Coats; Pop socks; Undershirts; Sports singlets; Robes; Braces for clothing [suspenders]; Coats for women; Bathrobes; Beach robes; Raincoats; Winter coats; Fleeces; Ponchos; Stockings; Dust coats; Pullovers; Mock turtleneck shirts; Tights; Footless tights; Athletic tights; Bib tights; Pedal pushers; Ski gloves; Gloves [clothing]; Gloves including those made of skin, hide or fur; Snowboard mittens; Knitted gloves; Winter gloves; Saris; Sarongs; Socks; Men's socks; Anti-perspirant socks; Sports socks; Pants; Dinner suits; Trousers shorts; Boxing shorts; Swimming trunks; Baby bunting [clothing]; Playsuits [clothing]; Trousers; Tracksuit bottoms; Gauchos; Skirts; Sports pants; Over-trousers; Sports bras; Thongs; Ballet suits; Ladies' dresses; Sweaters; Shawls; Mufflers [clothing]; Lounging robes; Shorts; Gym shorts; Sweat shorts; Boardshorts; Oilskins [clothing]; Short-sleeved T-shirts; Tops [clothing]; Warm-up tops; Trench coats; Coverups; Martial arts uniforms; Casualwear; Woollen tights; Windshirts; Hosiery; Morning coats; Knit jackets are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested Insoles; Insoles for footwear and the opponent’s footwear can coincide in producer, end user and distribution channels. Furthermore they are complementary. The goods are similar.

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to above average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

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

The common element ‘HEROES’ is meaningful in certain territories, for example, in those countries where Spanish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

Both signs are figurative marks. The earlier mark is composed of a figurative element, namely a Chinese character, underneath of which the verbal element ‘HEROES’ is depicted in bold black uppercase letters in standard typeface.

The contested mark is composed of a rather commonplace red heart-device followed by the verbal elements ‘LIVE’ in black uppercase letters and ‘HEROES’ in bold black uppercase letters, both in standard typeface.

The element ‘LIVE’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The element ‘HEROES’ in both marks will be understood with the same meaning as in English, that is, as ‘illustrious persons, famous for their feats or virtues’ by the relevant public (see dictionary of the Real Academia Española). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

As regards the contested sign, it is composed of distinctive verbal elements and a less distinctive figurative element of a merely decorative nature. Therefore, the verbal elements are more distinctive than the figurative element.

Both marks have no elements that could be considered clearly more dominant than other elements.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the word ‘HEROES’, depicted in an almost identical standard typeface. However, they differ in the word element ‘LIVE’ of the contested sign and their respective figurative elements, that is, the Chinese character in the earlier mark and the heart-device in the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛HE‑RO-ES’, present identically in both signs. The pronunciation differs in the syllables ‛LI‑VE’ of the contested mark, which have no counterpart in the earlier sign. The figurative elements will not influence the pronunciation.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to ‘heroes’, the signs are conceptually highly similar.

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

4. Distinctiveness of the earlier mark

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

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are partly identical and/or similar and partly dissimilar. The signs are aurally and visually similar to an average degree and conceptually highly similar.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Both marks are figurative marks, therefore, as stated above in section c), the verbal components of the signs usually have a stronger impact on the consumer than the figurative components. In the case at hand, the verbal elements in both signs are depicted in uppercase letters in an almost identical standard typeface. Furthermore, the figurative heart-device of the contested sign is a rather commonplace element. Finally, the only verbal element of the earlier sign is entirely reproduced in the contested mark.

As regards the relevant goods in Classes 18, 24 and 25, it is true that in clothes shops and shops for leather goods and textiles customers can themselves either choose the clothes or leather articles and bags they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, any considerable visual differences between the signs caused by additional elements are particularly relevant when assessing the likelihood of confusion between them.

The Opposition Division, however, notes that the concept of likelihood of confusion contains the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that the identical and similar goods and services come from the same or at least economically linked undertakings. This is all the more so in the present case, since in the relevant market of fashion and accessories (leather goods, bags, bath linen) it is common for producers to use various sub-brands deriving from a principal mark for several product lines. Therefore, ‘LIVE HEROES’ could be perceived as a special sub-brand of ‘HEROES’. Consequently, the Opposition Division considers that the differences between the earlier marks and the contested sign are not sufficient to exclude a likelihood of confusion. Therefore, a significant part of the public may believe that the identical and similar goods services come from the same or at least economically-linked undertakings.

Finally, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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). In the case at hand the identity and similarity between the goods outweighs the average similarity of the signs.

In its observations, the applicant argues that the goods are directed at a specialized public which shows a higher degree of attention.

The Opposition Division notes that this is true only for a very small part of the relevant goods and in particular some of the goods in Class 9, e.g. software which includes also programmes for specialized or professional purposes. However, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

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

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 13 006 028 for the word mark ‘HEROES’.

• German trade mark registration No 30 2015 038 844 for the figurative mark .

Since these marks cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and/or the goods are obviously not identical.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Konstantinos MITROU

Konstantinos MITROU

Martin EBERL

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.