OPPOSITION DIVISION
OPPOSITION No B 2 023 250
Royalton Overseas Ltd, 325 Waterfront Drive, Omar Hodge Building 2nd Floor,
Wickhams Cay, Road Town, Tortola, British Virgin Islands (opponent), represented by
Cristian Nastase, Splaiul Independentei no. 3, Bl. 17, sc. 2, ap.27, sector 4, 040011
Bucharest, Romania (professional representative)
a g a i n s t
S.C. Romarose Invest S.R.L., BD. Unirii, Nr.71, Bloc G2C, Etaj 7, Ap. 60, Sector 3,
030829 Bucuresti, Romania (applicant), represented by Mohamad Aamdan, S.C.
Romarose Invest S.R.L., B-dul Unirii, Nr. 71, Bloc G2C, Scara 2, Etaj 7, Ap.60,
030829 Bucuresti, Romania (employee representative).
On 23/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 023 250 is partially upheld, namely for the following
contested goods:
Class 21: Household or kitchen utensils and containers; glassware, porcelain
and earthenware not included in other classes.
2. European Union trade mark application No 10 686 822 is rejected for all the
above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 and services of European
Union trade mark application No 10 686 822, ‘KAISERHOFF’. The opposition is
based on European Union trade mark registration No 9 242 066, . The
opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 023 250 page: 2 of 8
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 8: Knives; table cutlery (knives, forks and spoons); vegetable knives;
choppers (knives); abrading instruments (hand instruments); agricultural
implements, hand-operated; garden tools, hand-operated; instruments
and tools for skinning animals; fire irons; can openers, non-electric;
oyster openers.
Class 21: Utensils for household purposes; cooking pot sets; tableware, other than
knives, forks and spoons; cooking utensils, non-electric; earthenware;
blenders, non-electric, for household purposes; trays for domestic
purposes; containers for household or kitchen use; coffee services; tea
services; hot pots, not electrically heated; cups, not of precious metal;
drinking vessels; vessels of metal for making ices and iced drinks; flasks;
drinking flasks for travellers; kettles, non-electric; earthenware
saucepans; frying pans; stew-pans; kitchen mixers, non-electric; griddles
(cooking utensils); bottle openers.
The contested goods and services are the following:
Class 11: Apparatus for lighting, steam generating, water supply and sanitary
purposes.
Class 21: Household or kitchen utensils and containers; combs and sponges;
brushes (except paint brushes); brush-making materials; articles for
cleaning purposes; steelwool; unworked or semi-worked glass (except
glass used in building); glassware, porcelain and earthenware not
included in other classes.
Class 35: Advertising; business management; business administration; office
functions.
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.
Decision on Opposition No B 2 023 250 page: 3 of 8
Contested goods in Class 11
The contested apparatus for lighting, steam generating, water supply and sanitary
purposes are devices for supplying artificial light, for illuminating a place, devices for
converting hot water into steam at high pressure for heating or power purposes and
water distribution installations and items used for personal sanitation such as
bathtubs, showers, sinks and water closets. They have a different nature, purposes,
manufacturers and distribution channels from the opponent’s goods in Classes 8 and
21, which cover household appliances and utensils, such as tableware, cooking pots,
household containers and hand-operated tools. Furthermore, they are neither
complementary nor in competition. Therefore, they are dissimilar.
Contested goods in Class 21
Household utensils, household or kitchen containers; earthenware not included in
other classes are identically contained in both lists of goods (including synonyms).
The contested kitchen utensils include, as a broader category, or overlap with, the
opponent’s cooking utensils, non-electric. Since the Opposition Division cannot
dissect ex officio the broad category of the contested goods, they are considered
identical to the opponent’s goods.
The contested glassware, porcelain not included in other classes includes, as a
broader category, or overlaps with, the opponent’s coffee services. Since the
Opposition Division cannot dissect ex officio the broad category of the contested
goods, they are considered identical to the opponent’s goods.
The contested combs and sponges; brushes (except paint brushes); articles for
cleaning purposes; steelwool are articles generally used in cleaning, polishing and
bathing, while the opponent’s goods include a variety of utensils and containers used
in the household in Class 21, as well as tableware and tools in Class 8. The
contested combs and sponges consist of combs for grooming people or animals and
of light porous highly absorbent materials used in bathing and cleaning. The
contested brushes (except paint brushes) are devices made of bristles, hair, wires,
etc., set into a firm back or handle: used to clean or polish surfaces, groom the hair,
etc. The contested articles for cleaning purposes are a broad category which
comprises several non-electric items for cleaning the home, such as brooms, carpet
sweepers or dusting cloths. The contested steelwool is a bundle of strands of thin
and soft steel filaments, used in finishing and repairing works, for polishing wood or
metal objects and for cleaning household cookware. These goods are considered to
be dissimilar to all the earlier goods in Classes 8 and 21, which cover household
appliances and utensils, such as tableware, cooking pots, household containers and
hand-operated tools. Although some of these goods may coincide partially in their
nature, inasmuch as they are all used in the household and/or in the kitchen, their
ultimate purpose is clearly different. They are not found in the same sections of
shops and they are normally not manufactured by the same undertakings.
Furthermore, they are neither complementary nor in competition. Therefore, they are
dissimilar.
The contested brush-making materials consist of raw materials used for the
manufacture of brushes. Therefore, they target undertakings which manufacture
brushes, whereas the opponent’s goods in Classes 8 and 21 are finished products
with a specific purpose, targeted at the general public. Consequently, these goods
differ in their nature and intended purpose. They originate from different undertakings
Decision on Opposition No B 2 023 250 page: 4 of 8
and do not target the same consumers. Furthermore, they will not be found in the
same sections of department stores and they are not in competition. Therefore, they
are dissimilar.
The contested unworked or semi-worked glass (except glass used in building) is a
raw or semi-finished material which is used in the manufacture of finished goods of
glassware. The mere fact that one product may be used for the manufacture of
another (e.g. glass used in the manufacture of some of the opponent’s goods in
Class 21) is not sufficient in itself to conclude that the goods are similar, as their
nature, purpose and customers are quite distinct (13/04/2011, T-98/09, T Tumesa
Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case law, the
raw materials subject to a transformation process are essentially different from the
finished products that incorporate, or are covered by, those raw materials, in terms of
nature, aim and intended purpose (03/05/2012, T-270/10, Karra, EU:T:2012:212,
§ 53). They are not complementary since one is manufactured with the other, and
raw material is in general intended for use in industry rather than for direct purchase
by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43).
Furthermore, the opponent’s goods in Classes 8 and 21 and the contested unworked
or semi-worked glass (except glass used in building) are manufactured by different
undertakings. Therefore, these goods are dissimilar.
Contested services in Class 35
The contested advertising; business management; business administration; office
functions are aimed at supporting or helping other businesses to do or improve their
business. Advertising services consist of providing others with assistance in the sale
of their goods and services by promoting their launch and/or sale, or of reinforcing a
client’s position in the market and acquiring competitive advantage through publicity.
Business management services are intended to help companies manage their
business by setting out the strategy and/or direction of the company and involve
activities associated with running a company, such as controlling, leading, monitoring,
organising and planning. Business administration services are intended to help
companies with the performance of business operations and consist of organising
people and resources efficiently so as to direct activities toward common goals and
objectives. Office functions are the internal day-to-day operations of an organisation,
including the administration and the support services in the ‘back office’, and mainly
cover activities that assist in the working of a commercial enterprise.
The contested services indicated above are usually rendered by specialised
companies such as business consultants, advertising agencies, employment
agencies, auditors, etc. and/or are usually focused on a specific type of business (to
assist with the running, management and business affairs of commercial
undertakings). These are specific services, supplied in areas completely unrelated to,
and having different natures and purposes from, the opponent’s goods in Classes 8
and 21. They have different providers and distribution channels and are neither
complementary nor in competition. Therefore, they are dissimilar.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
Decision on Opposition No B 2 023 250 page: 5 of 8
In the present case, the goods found to be identical are mass-consumption items and
directed at the public at large. The degree of attention is average.
c) The signs
KAISERHOFF
Earlier trade mark Contested sign
The relevant territory is 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 earlier mark is a figurative mark, consisting of the word ‘KAISERHOFF’, written
in slightly stylised upper case letters with the first and the last letters being prolonged
on the top, represented in a rectangular frame.
The contested sing is a word mark ‘KAISERHOFF’.
The word ‘KAISERHOFF’ in both signs may be perceived by, for example, the
German-speaking part of the public as referring to a family name. For the rest of the
public this word is meaningless. In either case, in relation to the relevant goods, its
distinctiveness is seen as normal. The figurative element of the earlier mark, namely,
the rectangular frame, is not distinctive, since it merely consists of simple geometric
shape and is purely decorative in nature. Therefore, the verbal element
‘KAISERHOFF’ is the most distinctive element of the earlier mark.
Neither of the marks has any element that could be considered more dominant
(visually eye-catching) than other elements.
Visually, the signs coincide in the word ‘KAISERHOFF’, which constitutes the verbal
element of the earlier mark and the contested sign in their entirety. The signs differ in
the figurative element and the typeface of the earlier mark. However, taking into
account the non-distinctive nature of the figurative element, it will not create any
significant differences between the marks. Therefore, the signs are visually similar to
a very high degree.
Aurally, the earlier mark and the contested sign will be pronounced as
/KAISERHOFF/. The figurative element of the earlier mark will not be referred to
orally by the relevant consumers. Therefore, the signs are aurally identical.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the word ‘KAISERHOFF’, present identically in both signs. The
figurative element of the earlier mark may be perceived as a rectangle. However, this
element is not distinctive and this sole difference does not have any relevant impact
on the conceptual comparison of the marks.
Decision on Opposition No B 2 023 250 page: 6 of 8
Therefore, the signs are conceptually identical for the part of the public that will
perceive the abovementioned meaning of the word ‘KAISERHOFF’, and the
conceptual aspect does not influence the assessment of the similarity of the signs for
the part of the public that will perceive the word ‘KAISERHOFF’ as meaningless.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the goods 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
As indicated above, the contested goods and services are partly identical and partly
dissimilar to the opponent’s goods and they target the public at large with an average
degree of attention. The distinctiveness of the earlier mark is average.
As indicated in section c), the signs are visually highly similar, aurally identical and
conceptually either identical or the conceptual aspect is neutral, depending on the
part of the public in the relevant territory. The visual (and conceptual) difference
arising from stylisation and non-distinctive figurative element of the earlier mark
cannot create significant differences between the signs and counteract the visual
similarity and aural (also conceptual – for the part of the public) identity between their
verbal elements ‘KAISERHOFF’.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and therefore the opposition is partly well founded
on the basis of the opponent’s European Union trade mark registration No 9 242 066,
.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical to those of the earlier trade mark.
The rest of the contested goods and services 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 and services cannot be
successful.
The applicant argues that it claimed for the contested EUTM the seniority of the
Romanian national mark ‘KAISERHOFF’ and such claim has been accepted by the
Decision on Opposition No B 2 023 250 page: 7 of 8
Office. In addition, the applicant submits some arguments and evidence in relation to
the Romanian trade mark registration No 110 809 (development, use, etc.). However,
in accordance with Article 34(2) EUTMR, seniority shall have the sole effect that,
where the proprietor of the EUTM surrenders the earlier mark or allows it to lapse, it
shall be deemed to continue to have the same rights as it would have had if the
earlier mark had continued to be registered. Therefore, the fact that the applicant
successfully claimed the seniority of the national mark does not mean that the
contested EUTM would enjoy a better priority right vis-a-vis the opponent’s EUTM
registration No 9 242 066 on which opposition is based. Consequently, the seniority
of the earlier Romanian trade mark and the arguments, submitted by the applicant, in
relation to the Romanian trade mark registration No 110 809, have no bearing on the
current proceedings, and is, therefore, irrelevant.
Since the opposition is partially successful on the basis of the inherent
distinctiveness of the earlier mark, there is no need to assess the enhanced degree
of distinctiveness of the opposing mark due to its extensive use as claimed by the
opponent and in relation to identical goods. The result would be the same even if the
earlier mark enjoyed an enhanced degree of distinctiveness.
Likewise, there is no need to assess the claimed enhanced degree of distinctiveness
of the opposing mark in relation to dissimilar goods and services, as the similarity of
goods and services is a sine qua non for there to be likelihood of confusion. The
result would be the same even if the earlier mark enjoyed an enhanced degree of
distinctiveness.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
The Opposition Division
Janja FELC Rasa BARAKAUSKIENE Oana-Alina STURZA
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
Decision on Opposition No B 2 023 250 page: 8 of 8
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.