OPPOSITION No B 2 749 441

Danibos Ltd, 71-75, Shelton Street, Covent Garden, London, London, City of WC2H 9JQ, United Kingdom (opponent), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 – 5ª planta, 28050 Madrid, Spain (professional representative)

a g a i n s t

Jawad Hussain Abdul Hamid, 41 Osborne road, South Southampton, Southampton, Hampshire SO17 2FD, United Kingdom (applicant).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 749 441 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 484 413 ‘BINGSALE’. The opposition is based on European Union trade mark registration No 15 419 278 ‘BINGSALE’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

On 05/09/2016, within the three-months period, the opponent rectified some errors made in the notice of opposition and indicated that the grounds are Article 8(1)(a) and (b) EUTMR and not Article 8(5) EUTMR and that the earlier mark is based on part of the goods, namely all the goods in Class 21.

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.

1. The goods

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

Class 21: Gloves for household purposes; All-purpose portable household containers; Bakeware [not toys]; Baking mats; Basting brushes; Blenders, non-electric, for household purposes; Blenders for food [non-electric]; Beverage coolers [containers]; Basting spoons [cooking utensils]; Cake moulds of non-metallic materials; Cake moulds of common metal; Cake molds [moulds]; Cake brushes; Brushes for basting meat; Canister sets; Candle rings, not of precious metal; Candle jars [holders]; Candle holders of wrought iron; Coffee filters, not of paper, being part of non-electric coffee makers; Coffee filters, non-electric; Coffee grinders, hand-operated; Containers for household or kitchen use; Cookie [biscuit] cutters; Cupcake molds; Double heat insulated containers for food; Garlic presses [kitchen utensils]; Garlic presses (Hand-operated -); Fruit presses, non-electric, for household purposes; Grill supports; Ice cream scoops.

The contested goods are the following:

Class 21: Tempered glass [not for building].

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.

On one hand, the earlier mark covers different kinds of containers and utensils for household and kitchen use. On the other hand, the contested mark covers tempered glass which is a kind of glass, much stronger that normal glass, which fractures into small, relatively harmless pieces. It is mainly used for screen protectors. Tempered glass is considered as unworked or semi-worked glass whereas the earlier goods are finished products.

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 (see, to that effect, 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, 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).

In the present case, the goods are not similar. The mere fact that some of the opponent’s products may be made of tempered glass is not sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels are distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51).

2. 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 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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 because 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.

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

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Sandra IBANEZ

Frédérique SULPICE

Benoit VLEMINCQ

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.