OPPOSITION No B 3 070 530

Masquepet, Calle Virgilio 25A 1ºC (Edificio Ayessa), 28036 Madrid, Spain (opponent), represented by Iberpatent, Félix Boix, 9-1° Derecha, 28036 Madrid, Spain (professional representative)

a g a i n s t

Hilodi - Historic Lodges & Discoveries, S.A., Rua do Choupelo, nº 250, 4400-088 Vila Nova de Gaia, Portugal (applicant), represented by Alexandra Paixão, Av. António Augusto de Aguiar, Nº 148, 4ºC e 5ºC, 1050-021 Lisboa, Portugal (professional representative).

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

DECISION:

1. Opposition No B 3 070 530 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 886 816 (figurative). The opposition is based on Spanish trade mark registration No 3 694 641 (figurative). The opponent invoked Article 8(1)(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.

a) The goods and services

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

Class 28: Toys for animals.

The contested goods and services, after a limitation made by the applicant on 19/02/2019, are the following:

Class 21: Cooking and table utensils, other than knives, forks and spoons; brush-making materials; articles for cleaning purposes; statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class; unworked and semi-worked glass, not specified for use; brushes and other articles for cleaning, brush-making materials; tableware, cookware and containers; cosmetic and toilet utensils and bathroom articles; brushes and brush-making articles; porcelain ware; crystal [glassware]; porcelain articles for decorative purposes; boxes of earthenware; boxes of porcelain; decorative boxes of glass; boxes of earthenware; enamel boxes; boxes of glass; crystal [glassware]; porcelain ware; porcelain ware; works of art made of porcelain; works of art made of glass; works of art made of glass; plaques of pottery; plaques of porcelain; plaques of porcelain; plaques of pottery; plaques of glass; souvenir plates; painted glassware; air fragrancing apparatus; dispensers for liquid soap [for household purposes]; soap dispensers; toilet brushes; clothes brushes; shaving brushes; cosmetic brushes; dispensers for liquid soap [for household purposes]; dispensers for detergents; sugar bowls; tea cosies; candle extinguishers; napkin rings; cabarets [trays]; coasters (tableware); trivets [table utensils]; coasters, not of paper or textile; coasters, not of paper or textile; trivets [table utensils]; potholders; mason jars; teapots; boxes for dispensing paper serviettes; cookie jars; cookie jars; boxes for sweetmeats; tea caddies; mugs; candlesticks; coffee mugs; tea cups; strainers; tea cosies; wine drip collars specially adapted for use around the top of wine bottles to stop drips; wine drip collars specially adapted for use around the top of wine bottles to stop drips; basting spoons [cooking utensils]; ice cream scoops; mixing spoons [kitchen utensils]; spice racks; glasses, drinking vessels and barware; pomanders [containers]; tea infusers; dispensers for serviettes; spatulas; earthenware; moulds [kitchen utensils]; glass flasks [containers]; oil cruets; bottles; glass flasks [containers]; place mats, not of paper or textile; place mats, not of paper or textile; pots; utensil jars; storage tins; tableware, other than knives, forks and spoons; fireproof dishes; butter dishes; oven mitts; spice grinders (non-electric -); salt mills; gravy boats; mustard pots; egg cups; toothpick holders; pestles for kitchen use; pepper pots; serving tongs; decorative china; plastic coasters; pots; dishes; nutcrackers; cheese-dish covers; tealight burners; kitchen containers; insulated food cover domes; glass stoppers; glass stoppers for bottles; salad bowls; salt and pepper shakers; coffee services [tableware]; tea services [tableware]; services [dishes]; spice sets; glass holders for candles; cake stands; table napkin holders; cups; carving boards; cocktail sticks; nebulizers for household use; towel rings; dental cleaning articles; shaving brushes; toilet cases; cosmetic bags [fitted]; toilet cases; cosmetic powder compacts; pill boxes [not for medical purposes]; boxes for dispensing paper towels; cosmetic powder compacts; dispensers for cosmetics; brushes for personal hygiene; bath brushes; sponges; toilet cases; comb cases; perfume bottles; combs; perfume vaporizers; soap dishes; basins [bowls]; toilet utensils; cosmetic utensils; perfume vaporizers; tie presses; shoe horns.

Class 33: Preparations for making alcoholic beverages; alcoholic beverages (except beer); alcoholic beverages (except beer); cider; cider; wine; spirits and liquors; pre-mixed alcoholic beverages; mead [hydromel]; cocktails; alcoholic essences; fruit extracts containing alcohol; alcoholic extracts; alcoholic fruit extracts.

Class 35: Merchandising.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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

The contested goods in Class 21 are household utensils for cleaning; brushes and brush-making materials; tableware, cookware and containers; cleaning articles; cosmetics and toilet utensils; air fragrance apparatus; and figurines, statues and works of art, made of materials such as porcelain or glass. The contested goods in Class 33 in general are alcoholic beverages or preparations for making such beverages. Finally, the contested services in Class 35 are business services falling under the category of advertising and marketing, provided by special agencies.

The opponent’s mark is protected for the singular good, toys for animals, whose main purchaser would be pet owners.

None of the contested goods or services have anything in common with the opponent’s goods. They have different natures, methods of use and purposes. They target different publics and will generally be distributed via completely distinct distribution channels — pet stores versus household stores or grocery stores. Consumers will be perfectly aware of their different commercial origins. They are not complementary.

As far as the services are concerned, goods and services are different by nature and only in certain circumstances may similarity between them be found. This is not the case here, as the goods and services in question are not complementary and have nothing in common.

Therefore, the goods and services are considered dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sofia SACRISTAN MARTINEZ

Manuela RUSEVA

Sylvie ALBRECHT

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.