OPPOSITION DIVISION

OPPOSITION No B 2 819 210

CBM Creative Brands Marken GmbH, Kalandergasse 4, 8045 Zürich, Switzerland

(opponent), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf,

Germany (professional representative)

a g a i n s t

Xiamen Hexun Trading LLC, Unit 312 F/3 No.86, Anling Two Rd. Huli Dist. Xiamen

Fujian, People’s Republic of China (applicant), represented by Teodoru I.P. SRL, 12

PRELIMINARY REMARK:

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark

application No 15 824 311 , namely against all the

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

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

Class 35: Advertising; Business management; Business administration; Office

functions; Retail services, including via websites and teleshopping, in

relation to clothing, footwear, headgear, bleaching preparations and

other substances for laundry use, cleaning, polishing, scouring and

abrasive preparations, soaps, perfumery, essential oils, cosmetics,

hair lotions, dentifrices, sunglasses, precious metals and their alloys

and goods in precious metals or coated therewith, jewellery, precious

stones, horological and chronometric instruments, leather and

imitations of leather, and goods made of these materials, animal skins,

hides, trunks and travelling bags, bags, handbags, wallets, purses,

[Japanese school satchels]; Cases of leather or leatherboard;

Luggage tags; Tool bags, empty; School bags; Pocket wallets.

Class 21: Porcelain ware; Pottery; Works of art of porcelain, ceramic,

earthenware or glass; Crystal [glassware]; Tea services [tableware];

Perfume burners; Toilet cases; Candlesticks; Glass bowls; Utensils for

household purposes; Glasses [receptacles]; Fitted vanity cases; Toilet

paper holders; Kitchen utensils; Stretchers for clothing.

Class 28: Apparatus for games; Toys; Playing cards; Playing balls; Body-

building apparatus; Machines for physical exercises; Roller skates;

Fishing tackle; Protective paddings [parts of sports suits]; Hunting

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.

goods or services are not regarded as being similar or dissimilar to each other on the

Classification.

school bags are included in, or overlap with, the broad category of the opponent’s

and imitations of leather, and goods made of these materials and not included in

other classes. Therefore, they are identical.

The contested luggage tags are similar to the opponent’s bags as they can have the

same producer and distribution channels, and also target the same end user.

Furthermore, they are complementary to each other.

Contested goods in Class 21

The contested porcelain ware; pottery; works of art of porcelain, ceramic,

earthenware or glass; crystal [glassware]; tea services [tableware]; perfume burners;

toilet cases; candlesticks; glass bowls; utensils for household purposes; glasses

[receptacles]; fitted vanity cases; toilet paper holders; kitchen utensils; stretchers for

clothing are dissimilar to all the opponent’s goods in Classes 18 and 25. They differ in

their nature and purpose, distribution channels, sales outlets, producers and method

of use. They are neither in competition with each other, nor complementary to each

other.

The same reasoning concerns the contested goods and the opponent’s services in

Contested goods in Class 28

The contested apparatus for games; toys; playing cards; playing balls; body-building

apparatus; machines for physical exercises; roller skates; fishing tackle; protective

paddings [parts of sports suits]; hunting game calls; body-building apparatus

purpose, distribution channels, sales outlets, producers and method of use. They are

neither in competition with each other, nor complementary to each other.

The same reasoning concerns the contested goods and the opponent’s services in

Class 35. In particular, retail services relating to the sale of particular goods and other

goods are not similar. It should be remembered that in principle goods are not similar

to services. Too broad a protection would be given to retail services if similarity were

found even where the goods sold at retail were highly similar to the goods covered by

the other mark. Furthermore, it should be added that goods are tangible, whereas

services are intangible.

b) Relevant public — degree of attention

In the present case, the goods found to be identical or similar are directed at the

c) The signs

HOLY

The contested sign is a figurative sign composed of the word ‘HOLYLUCK’. The letter

‘C’ is crowned with two leafs. In addition, the sign concerned contains a figurative

component which is a tree (just above the letters ‘LYLU’).

The word ‘HOLY’ of the earlier mark is meaningful in some official languages of the

European Union. For instance, in English it means ‘dedicated or consecrated to God

or a religious purpose’ (information extracted in Oxford Dictionary on 06/12/2017 at

www.oxforddictionaries.com) and in Czech and Slovak it stands for ‘bare, naked’

(‘ničím nepokrytý; obnažený’; information extracted in Internetový slovník současné

češtiny on 06/12/2017 at www.nechybujte.cz/slovnik-soucasne-cestiny). In other

languages it is meaningless. In any case the word ‘holy’ has no meaning for the

is therefore distinctive for the goods in question. However, some part of the English-

speaking public could break down the contested verbal element into two parts, as

they both have a meaning. The above explanations should apply with regard to the

word ‘HOLY’. Concerning the word ‘luck’ it stands for ‘success or failure apparently

brought by chance rather than through one's own actions’ (information extracted in

Oxford Dictionary on 06/12/2017 at www.oxforddictionaries.com). Bearing in mind the

above, the word ‘holyluck’ would mean ‘devine luck’/’beyond normal luck’. In this

case the word ‘holyluck’ is meaningless for the relevant goods and is therefore

distinctive.

The figurative elements of the contested sign have no relation to the goods in

Aurally, irrespective of the different pronunciation rules in different parts of the

relevant territory, the pronunciation of the signs coincides in the syllables ‛HO-LY’,

present identically in both signs. The pronunciation differs in the sound of the syllable

‛LUCK’ of the contested mark, which has no counterpart in the contested mark.

Therefore, the signs are similar to a low degree.

Conceptually, some part of the public in the relevant territory will perceive the

meaning of the earlier mark as explained above. Also some part of the public will

understand the word ‘holyluck’ as explained above. However, in neither case the

d) Distinctiveness of the earlier mark

in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade mark enjoys a high degree of

distinctiveness as a result of its long standing and intensive use in the Germany and

in other countries of the European Union in connection with the goods for which it is

This claim must be properly considered given that the distinctiveness of the earlier

trade mark must be taken into account in the assessment of likelihood of confusion.

Indeed, the more distinctive the earlier mark, the greater will be the likelihood of

less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. As the opponent requested

that certain commercial data contained in the evidence be kept confidential vis-à-vis

third parties, the Opposition Division will describe the evidence only in the most

general terms without divulging any such data.

The evidence consists of the following documents:

for example: invoices, price lists, affidavits, catalogues, surveys, turnover and sales

figures, press clippings, samples of products/packaging, advertisements, offers made

to potential clients and other documents confirming that the mark was used genuinely

promotional catalogue. It should be emphasised that the final outcome depends on

is not enough to ascertain that the earlier trade mark acquired a high degree of

distinctiveness through its use.

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.

e) Global assessment, other arguments and conclusion

into account all the factors relevant to the circumstances of the case; this

recognition of the mark on the market, the association that the public might make

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).

additional distinctive elements in the contested sign such as additional figurative

elements and additional letters. The layout of the contested sign is very distinctive.

Therefore, the global impression given by the marks under comparison is different

which excludes likelihood of confusion.

Considering all the above, even for those goods considered identical, there is no

likelihood of confusion on the part of the public. Therefore, the opposition must be

rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must

and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the

maximum rate set therein.

Michal KRUK Judit

NÉMETH

According to Article 67 EUTMR, any party adversely affected by this decision has a