OPPOSITION No B 2 729 831

Matalan Limited, Matalan Head Office, Perimeter Road, Knowsley Industrial Park  Liverpool L33 7SZ, United Kingdom (opponent), represented by Groom Wilkes & Wright LLP, The Haybarn, Upton End Farm Business Park, Meppershall Road, Shillington, Hitchin, Hertfordshire SG5 3PF, United Kingdom (professional representative)

a g a i n s t

Zeroformat Limited, 3rd Floor, 24 Chiswell Street, London  EC1Y 4YX, United Kingdom (applicant), represented by Invention S.r.l., Via delle Armi 1, 40137 Bologna

Italy (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1. The decision adopted by the Opposition Division on 17/05/2017 is hereby revoked and replaced by the present decision.

2. Opposition No B 2 729 831 is partially upheld, namely for the following contested goods:

Class 35:        Online retail services of household, health and beauty and electrical goods namely towels, lighting, bedding, bathroom products, cookware, tableware, home décor, cutlery, cleaning products and kitchen products, furniture, domestic electrical and electronic equipment, garden requisites, garden tools; department stores retail services of household, health and beauty and electrical goods namely towels, lighting, bedding, bathroom products, cookware, tableware, home décor, cutlery, cleaning products and kitchen products, furniture, domestic electrical and electronic equipment, garden requisites, garden tools; Home shopping, catalogue and mail order retail services of household, health and beauty and electrical goods namely towels, lighting, bedding, bathroom products, cookware, tableware, home décor, cutlery, cleaning products and kitchen products, furniture, domestic electrical and electronic equipment, garden requisites, garden tools; television channels retail services of household, health and beauty and electrical goods namely towels, lighting, bedding, bathroom products, cookware, tableware, home décor, cutlery, cleaning products and kitchen products, furniture, domestic electrical and electronic equipment, garden requisites, garden tools.

3. European Union trade mark application No 14 972 657 is rejected for all the above services. It may proceed for the remaining services.

4. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 14 972 657 for the figurative trade mark , namely against all services in Class 35. The opposition is based on European Union trade mark registration No 10 268 605 for the figurative trade mark . The opponent invoked Article 8(1)(b) EUTMR.

REVOCATION OF DECISION OF 17/05/2017

On 24/05/2017, the Office informed the parties in the present proceedings that it intended to revoke the decision of 17/05/2017 taken in opposition proceedings No B 2 729 831. The reason was that the proceedings that had led to this decision contained an obvious error attributable to the Office, namely that the dictum of the said decision was not complete.

In accordance with Article 80 EUTMR, the Office gave the parties one month to submit observations. The parties did not file any observations in response.

Therefore, the decision taken by the Opposition Division on 17/05/2017 in the opposition No B 2 729 831 is hereby revoked.

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 and services

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

Class 3:        Soaps, toiletries, cosmetics, hair care products; skin care products; bath lotions, deodorants, cleansers, moisturisers, perfumery, detergents, gels for use on the hair, non-medicated toilet preparations; dentifrices, shampoos, nailcare preparations, antiperspirants, depilatory preparations, shaving soaps, cosmetic preparation for tanning the skin; eau de cologne, disinfectant soaps, deodorant soaps, stain removers, toilet waters; shaving preparations, hair waving preparations, hair setting preparations; cleaning preparations; shower preparations; preshaving and aftershaving lotions; creams, washing and bathroom preparations, body powder, toilet articles; body care products, beauty care products; colouring matters, tints and lotions, all for the hair and the beard, hair bleaching preparations; preparation for the care of the body, emery boards, emery paper, emery cloth all for nail grooming; dyestuffs; antiperspirant soap; bath salts, not for medical purposes; boot cream; boot polish; cleansing milk for toilet purposes; cosmetic kits; cosmetics essential oils; eye makeup; eyebrow cosmetics; eyebrow pencils; hair colorants; hair dyes, hair lotions; lotions for cosmetic purposes; makeup; makeup powder; makeup preparations; makeup removing preparations; beauty masks; medicated soap; nail polish; nail varnish; oils for cosmetic purposes; oils for perfumes and scents; perfumes; shaving preparations; shaving soap; shoe cream; shoe polish; shoe wax; suntanning preparations; talcum powder; tissues impregnated with cosmetic lotions; toiletries; nail varnish; nail varnish removing preparations.

Class 4:        Candle assemblies; candles; Christmas tree candles; candles for use as nightlights; candles for use in the decoration of cakes; fragranced candles; musk scented candles; scented candles; wicks for candles; fire lighters, fuel, gas fuel, gas for lighting.

Class 6:        Common metals and their alloys; ironmongery; small items of metal hardware; safes; aluminium foil; safety cash boxes of common metal; buckles of common metal; cashboxes of metal; clips of metal for cables and pipes; nonelectric door bells; non-electric door closers; door fittings of metal; door frames of metal; door handles of metal; door knockers; non-electric door openers; door stops of metal; doors of metal; fittings of metal for beds; fittings of metal for furniture; fittings of metal for windows; metal hardware; hooks; keys; rings of common metal for keys; money boxes of metal; cans; foil; boxes of metal; tool chests of metal; tool handles of metal; non-electric wires and cables of metal; parts, fittings and components for all the aforesaid goods.

Class 7:        Machine tools; power hammers; electric vacuum cleaners and hose and bags therefor; floor polishers, polishing machines and apparatus, floor cleaning machines and apparatus, wet and dry vacuum cleaners, shampooing apparatus, apparatus for cleaning carpets, rugs and curtains, filters for vacuum cleaners; electric cleaning apparatus; electric shoe polishers; cleaning machines and apparatus; cutters and hair clippers for animals; electric kitchen appliances, electric knives, electric choppers; electric hand mixers; power-operated garden machinery and appliances (lawnmowers, weeders); food mixers and attachments thereto, food processors, beaters, mixers, blenders and whisks for use in preparing food and drink; juice extracting machines; machines for making ice cream; machines for use in the household; electric openers, electric can openers, sewing machines and knitting machines; machines for washing laundry, spin dryers, combined washing and drying machines; electric scissors, electric clippers; knife sharpeners; electric knife sharpening instruments; electrical domestic appliances for polishing, scouring, vacuuming and washing; parts, fittings and components for all the aforesaid goods.

Class 8:        Hand tools and implements; hand operated tools and apparatus; non-electric hand tools; cutlery, forks and spoons; scissors; tweezers; hammers; hand drills, hand tools; shaving instruments sold individually or as part of a kit, razor blades, razor blade dispensers, razor cases, razors, electric razors; clippers; saw blades; saw holders; saws; screwdrivers; hair waving apparatus; hair styling apparatus; parts, fittings and components for all the aforesaid goods.

Class 9:        Telecommunication installations, apparatus and instruments; telephone apparatus; telephones, mobile telephones, cordless telephones; telephone answering apparatus and instruments; paging apparatus; apparatus for recording, transmission or reproduction of sound or images; photographic apparatus and instruments; cases for photographic apparatus and instruments; cameras; video cameras; camcorders; television apparatus and instruments; televisions; televisions for receiving satellite broadcasting; satellites and decoders; video apparatus and instruments; video recording machines; video disc players; DVD players; television aerials; antennas; transformers; surge protectors; remote control apparatus; audio systems; tuners; automatic playback machines; radio receivers; CD players; personal CD players; tape recorders; tape players; cassette decks; turntables; record players; graphic equalizers; headphones; speakers, loud speakers, earphone speakers, speaker cables; amplifiers; cabinets for loud speakers and amplifiers; portable audio apparatus and instruments; radios, clock radios; karaoke machines, juke boxes; computers, lap-top and notebook computers, game computers; computer peripherals; computer terminals; visual display units; computer hardware, computer software; computer programs; disc drives; CD Roms; computer games; tapes, discs and floppy discs, all recorded with computer programs; video games; discs and tapes all for video games; games adapted for use with television receivers; audio and video tapes and discs, all in pre-recorded form; blank tapes for recording audio and video; compact discs; sound recordings; phonograph records, cassettes and discs; tapes for tape recorders; digital audio tapes; head cleaning tapes; electronic games; cabinets and stands all adapted for audio, video and television apparatus and instruments; word processing apparatus and instruments; photocopying apparatus and instruments; facsimile processing apparatus and instruments; calculating machines; scales; clocks and timers; controllers and keypads all for heating, ventilation, air conditioning, lighting and security; containers for microscope slides; magnets; magnifying glasses; pedometers; periscopes; batteries, battery chargers, battery boxes; plugs; electric irons; electric hair curling apparatus; electric steam curling sets; electrically heated haircurlers; binoculars; spectacles, sunglasses, swimming goggles; spectacle frames and lenses; cases for spectacles and sunglasses; spectacle chains and cords; irons; parts, fittings and components for all the aforesaid goods.

Class 11:        Apparatus and installations for lighting, heating, cooking, refrigerating, freezing and drying; electric lamps, ceiling lights; electric light bulbs, fluorescent tubes; lamp shades, lamp shade holders; electric torches, electric pocket torches; cycle lights; electric tree lights for Christmas trees; electric fires; fan heaters; electric blankets not for medical purposes; pocket warmers; warming pans; water heaters; ovens, cookers, microwave ovens; grills, table top grills and rings; electric food warmers; toasters, toaster ovens, toasting apparatus for food products; electric deep fryers; pressure cookers, domestic pressure cookers, pressure cooking saucepans; rice cookers; roasters, malt roasters; barbecues; waffle irons; saucepans; electric kettles, electric water boiling jugs; coffee makers, electric coffee filters, electric coffee percolators; machines for making hot drinks; stands for cordless electric kettles and water boiling jugs; coffee filters; electric cooking utensils; plate warmers; hot plates; combined refrigerators and freezers; ice machines, ice boxes; sterilizers; fans; hairdryers; steam facial apparatus (saunas); bath fittings; lighters; vehicle reflectors; tumble dryers; parts, fittings and components for all the aforesaid goods.

Class 14:        Clocks and watches; sports watches, horological and chronometric instruments; watch straps; trophies, being of precious metal or coated therewith; jewellery and imitation jewellery; time keeping instruments; alarm clocks; badges of precious metal; boxes; boxes of precious metal; bracelets; cases for clock and watch-making; cases for watches; chains of precious metal; clock cases; clock hands; imitation gold; jewel cases of precious metal; key rings; rings being jewellery; tie clips, tie pins; watch bands; wrist watches; ornaments of precious metals; trinkets; key fobs made of leather incorporating key rings; jewellery cases; trinket boxes; parts, fittings and components for all the aforesaid goods.

Class 16:        Books, printed matter, pictures, posters, prints, writing implements, printed cards, stationery; glues; binders, binder materials, greeting cards, ball pens, felt pens; nib pens, mechanical pencils; photographs, albums, toilet tissues, toilet paper, rolls of paper, all for use in the kitchen; serviettes, towels and wipes; napkins and table cloths; placemats; paper tableware, address books, binder note books, clear books, loose leaf books, note books, spiral note books, stock books, word note books, paint brushes, calendars, diaries, photograph holders, instructional and teaching materials (other than apparatus); sign pens, pen stands, pencil stands, photo stands; stickers; tapes; magazines; newspapers; transfers and decalcomanias, pen trays, pencil trays, manuals, wrappers; towels of paper; table liners of paper, face towels of paper; hygienic paper, handkerchiefs, writing paper; catalogues, brochures and leaflets; coasters; wrapping and packing materials; dust bags for vacuum cleaners; electronic typewriters; ink ribbon for electronic typewriters; typewriting apparatus and instruments; office machines; parts, fittings and components for all the aforesaid goods.

Class 18:        Bags, luggage, travelling bags and cases; wallets and purses; umbrellas, parasols and walking sticks; trunks, pannier bags, travel bags, haversacks, back packs, briefcases, rucksacks; shopping bags, holdalls; belts, keycases; school bags and school satchels; beach bags; sports bags; parts, fittings and components for all the aforesaid goods.

Class 20:        Furniture; bolsters, pillows; cushions, mattresses, sleeping bags; bedding; bed casters, not of metal; beds; benches; bins; boxes; brackets; bakers bread baskets; cable clips; casters; chairs; chests of drawers; chests; containers of plastic, containers; cupboards; curtain hooks, curtain rails, curtain rings, curtain rods, curtain rollers, curtain tiebacks, curtains; deck chairs, desks, divans, door fittings; door furniture; easy chairs; hampers (baskets); identity plates; magazine racks; picture frames; mirrors; sofas; stools; tables; goods not included in other classes of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials or of plastics; sleeping bags; curtain tie backs; parts, fittings and components for all the aforesaid goods.

Class 21:        Small domestic utensils and containers; household or kitchen utensils, articles and containers; cutlery drawer inserts; plates, cups, bowls and dishes; baskets for domestic use; trays for domestic purposes; works of art; candle holders; watering cans; ice buckets; sculptures and statuettes; reproduction of sculptures; glassware; porcelain; earthenware; figurines; miniature figures; ornaments; vases and urns; flower pots; tableware; cooking utensils; pressure cookers; jugs and drinking vessels; non-electric machines, mills and grinders for tea and coffee; combs, sponges; brushes; non-electric instruments and materials, all for cleaning; kettles, coffee pots; household and kitchen filters, receptacles for filter paper inserts all for household or kitchen use; ironing boards, refuse bins, towel rails, vegetable racks; giftware articles and works of art, all made of bone china, china, crystal, earthenware, glass, porcelain or terracotta; decorative articles made of glass, decorated china, chinaware, earthenware or porcelain; domestic bread baskets; mugs, tankards, all being of precious metal or coated therewith; candle rings of precious metal; candlesticks of precious metal; non electric coffee pots, household containers all of precious metal; household utensils of precious metal; kitchen containers of precious metal; kitchen utensils of precious metal; saucers of precious metal; parts, fittings and components for all the aforesaid goods.

Class 24:        Textile articles, textiles, textile wall hangings; linen and upholstery fabrics; bed linen, bed covers, bed clothes, bed spreads, quilt covers, duvet covers, pillow cases, quilts, duvets; bath linen, towels; table linen, table covers, table cloths, table mats; table napkins; kitchen towels, tea towels; curtains, blinds; cushion covers; handkerchiefs; parts, fittings and components for all the aforesaid goods.

Class 26:        Laces, embroidery; artificial flowers, artificial fruit; hair beads; grips, slides; brooches, buckles, buttons; needle cases, needle cushions; clasps; clothing fasteners, eyelets for clothing; curlers; fasteners; badges, patches; pin cushions; belt buckles, being of precious metal or coated therewith; boxes of precious metal for needles; parts, fittings and components for all the aforesaid goods.

Class 27:        Floor coverings, carpets, carpeting, linoleum, floor tiles, floor mats, mats, matting, door mats, bath mats, rugs; wall coverings, wall hangings; parts, fittings and components for all the aforesaid goods.

Class 28:        Gymnastic and sporting articles; toys, games, playthings, soft toys, novelties; balloons; Christmas decorations; sporting articles; electronic games; computer games; decorations for Christmas trees; miniature figurines, artificial Christmas trees and Christmas tree stands; playing cards; parts, fittings and components for all the aforesaid goods.

The contested services are the following:

Class 35:        Online retail services of household, health and beauty and electrical goods namely towels, lighting, bedding, bathroom products, cookware, tableware, home décor, cutlery, cleaning products and kitchen products, furniture, domestic electrical and electronic equipment, garden requisites, garden tools; Department stores retail services of household, health and beauty and electrical goods namely towels, lighting, bedding, bathroom products, cookware, tableware, home décor, cutlery, cleaning products and kitchen products, furniture, domestic electrical and electronic equipment, garden requisites, garden tools; Home shopping, catalogue and mail order retail services of household, health and beauty and electrical goods namely towels, lighting, bedding, bathroom products, cookware, tableware, home décor, cutlery, cleaning products and kitchen products, furniture, domestic electrical and electronic equipment, garden requisites, garden tools; Television channels retail services of household, health and beauty and electrical goods namely towels, lighting, bedding, bathroom products, cookware, tableware, home décor, cutlery, cleaning products and kitchen products, furniture, domestic electrical and electronic equipment, garden requisites, garden tools; business management services, including assistance and advice in the establishment and management of sales by television, cable, catalogs, mail order, telephone, mobile phone, portable and hand-held digital and electronic devices, computers and/or networks in the field of general merchandise; the provision to customers and to potential customers of advice and information relating to the selection and purchase of goods; advertising and sales promotion of general merchandise by means of television, cable, catalogs, mail, telephone, mobile phone, portable and hand-held digital and electronic devices, computer and/or networks.

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

The term ‘including’, used in the applicant’s list of services, indicates that the specific services 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).

However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods (05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The goods towels, lighting, bedding, bathroom products, cookware, tableware, home décor, cutlery, cleaning products and kitchen products, furniture, domestic electrical and electronic equipment, garden requisites, garden tools to which the contested online retail services, department stores retail services, home shopping, catalogue and mail order retail services, television channels retail services refer are identical to some of the opponent’s goods either because they are identically contained in the list of the opponent’s goods (towels, bedding, tableware, cutlery, furniture) or because these goods (as it is in case of lightening) are included in the broad categories of the opponent’s goods (lighting apparatus and installations for lighting) or because they include (as it is in case of bathroom products, cookware, home décor, cleaning products and kitchen products, domestic electrical and electronic equipment, garden requisites, garden tools) as broader categories some of the opponent’s goods (e.g. towel rails, cooking utensils; pressure cookers; plates, cups, bowls and dishes; tableware; figurines; ornaments; vases and urns; flower pots; sponges; brushes; non-electric instruments and materials, all for cleaning; kitchen utensils (Class 21), electric food warmers; electric kettles (Class 11), computers, game computers; electronic games (Class 9), hand tools and implements (Class 7).

Therefore, the contested online retail services of household, health and beauty and electrical goods namely towels, lighting, bedding, bathroom products, cookware, tableware, home décor, cutlery, cleaning products and kitchen products, furniture, domestic electrical and electronic equipment, garden requisites, garden tools; Department stores retail services of household, health and beauty and electrical goods namely towels, lighting, bedding, bathroom products, cookware, tableware, home décor, cutlery, cleaning products and kitchen products, furniture, domestic electrical and electronic equipment, garden requisites, garden tools; home shopping, catalogue and mail order retail services of household, health and beauty and electrical goods namely towels, lighting, bedding, bathroom products, cookware, tableware, home décor, cutlery, cleaning products and kitchen products, furniture, domestic electrical and electronic equipment, garden requisites, garden tools; Television channels retail services of household, health and beauty and electrical goods namely towels, lighting, bedding, bathroom products, cookware, tableware, home décor, cutlery, cleaning products and kitchen products, furniture, domestic electrical and electronic equipment, garden requisites, garden tools are similar to a low degree to the opponent’s goods towels (Class 24), apparatus and installations for lighting (Class 11), bedding (Class 20), towel rails, cooking utensils; pressure cookers; plates, cups, bowls and dishes; tableware; figurines; ornaments; vases and urns; flower pots; (Class 21); cutlery (Class 8), sponges; brushes; non-electric instruments and materials, all for cleaning; kitchen utensils (Class 21), furniture (Class 20), electric food warmers; electric kettles (Class 11), computers, game computers; electronic games (Class 9), hand tools and implements (Class 7).

However, there is no similarity between the remaining contested services and the opponent’s goods. 

Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

These services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Therefore, they are dissimilar.

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. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods. The fact that some goods may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods being advertised.

The same arguments as in the previous paragraph apply in relation to the services of provision to customers and to potential customers of advice and information relating to the selection and purchase of goods. The mere fact that the advice relating to the selection and purchase of goods includes reference to these goods is not sufficient for finding a similarity.

Consequently, the contested services business management services, including assistance and advice in the establishment and management of sales by television, cable, catalogs, mail order, telephone, mobile phone, portable and hand-held digital and electronic devices, computers and/or networks in the field of general merchandise; the provision to customers and to potential customers of advice and information relating to the selection and purchase of goods; advertising and sales promotion of general merchandise by means of television, cable, catalogs, mail, telephone, mobile phone, portable and hand-held digital and electronic devices, computer and/or networks are considered dissimilar to all the opponent’s goods in Classes 3,4,6,7,8,9,11,14,16,18, 20, 21, 24, 26, 27 and 28.

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.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

In the present case, the goods and services found to be similar to a low degree are directed at the public at large and at business customers. The degree of attention paid by consumers during the purchase of those goods or services is deemed to vary from average to high, depending on the nature, price and level of sophistication of the goods and services (e.g. a higher than average degree of attention will be paid when purchasing very expensive, design furniture or contracting television channels retail services whereas a rather average degree of attention will be paid when purchasing in shops or on-line some cheap towels, tableware etc.).

3. The signs

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 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). 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 verbal elements are the English words ‘the home store’. The word ‘store’ is meaningful in certain territories, for example in the United Kingdom but meaningless in other parts of the relevant territory, for example in Spain. The Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that would not understand any meaning when perceiving this word, such as the Spanish speaking public.

The earlier mark is a figurative mark, consisting of slightly stylized sequence of nine characters, written in small black typeface, which constitute the verbal element ‘homestore’ whereas the letter ‘o’ in the first half of the sign includes the definite article ‘THE’ written in significantly smaller capital black letters and the letter ‘o’ in the second half of the sign is substituted by a simple drawing of a house. The drawing consists of two set of simple houses in black lines, while the line of the one inside is bold.  

The contested mark is also a figurative mark consisting of a simple drawing of an inclined house in bold green lines, with a grey shadow appearing underneath. Inside of this drawing and placed on top of each other are depicted three verbal elements ‘the home store’ written in slightly stylized turquoise coloured small letters. Above these elements and just below the roof top is a green dot. The combination of all these elements causes that the contested sign could be easily perceived as a tag.

The figurative elements in both marks convey the idea of a house or a home and as such they allude to the purpose of the goods and services covered by both marks in Classes 21 and 35 (household and domestic articles and utensils, decorative items and services related thereto). The distinctiveness of these figurative elements is therefore weak.

The verbal elements ‘the home store’ included identically in both marks do not exist as such in Spanish. However, the Opposition Division’ is of the opinion that the definite article ‘the’ and the word ‘home’ will be understood due to the fact that they form a part of basic English vocabulary. The word ‘home’ is a basic English word and it is extensively used in advertisement, slogans, description of services etc. throughout the whole European union (e.g. home delivery, home sweet home’, Zara home). Considering that the relevant goods and services are generally intended to be used for equipment of a household, of a home, the word ‘home’ will indicate their purpose. Therefore, it is considered to be weak in relation to these goods and services. Regarding the element ‘the’, it will be perceived as a mere definite article in English and therefore it is a non-distinctive element in both marks. As for the remaining verbal element, the word ‘store’, this will be not understood by the significant part of the relevant public as it does not belong to English basic vocabulary, neither is it extensively used in the relevant territory. Hence, it can be reasonably assumed that the word ‘store’ does not convey any clear or immediately perceptible meaning for a substantial part of the Spanish-speaking public. Hence, the common element ‘store’ has a normal inherent distinctive character.

Although the element ‘THE’ is written in smaller letters than the rest, because of its unusual position (within the letter ‘O’) and the fact that it is written in capital letters, it is equally eye-catching as the other elements of the earlier mark.

Bearing in mind the above, none of the marks has an element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their verbal elements ‘the home store’. Although both include the simple depiction of a house, they differ in its representation. Furthermore, they differ in their colours, position of the verbal elements and overall graphical representation.

Although the average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign or a mark including verbal elements, they will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Therefore, although the verbal elements in the earlier mark are written together, the relevant public would perceive the mark as composed of three different verbal components, namely ‘THE’, ‘home’ and ‘store’.

In addition, it has to be kept in mind that, 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).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincide in the sound of their verbal elements ‘the home store’. The figurative elements are not subject to pronunciation.

Even the elements ‘the’ and ‘home’ will have a lesser impact when assessing the similarity of the signs due to their non-distinctive/weak character, the remaining element ‘store’ has a normal inherent distinctive character and will be pronounced identically.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the verbal elements of the marks.

The drawing of a house, included in both signs, will be perceived as reference to a house, home. This apply also in case that a part of the public will rather see the contested sign as a tag. Since it is in a form of a house, the reference to the respective meanings will still be clearly perceived.

The figurative elements and the words ‘the’ and ‘home’ will convey the same concept, however, due to their weak/non-distinctive character, they have a limited impact in differentiating the signs.

As already mentioned above the distinctive element ‘store’ will be not understood and therefore does not convey any concept.

Therefore, the degree of conceptual similarity between the signs is below average.

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak (home) and a non-distinctive element (THE) in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The 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). The interdependence principle is crucial to the assessment of likelihood of confusion as, in the present case, the goods at issue are identical.

The signs are visually similar to an average degree and aurally identical. The signs furthermore coincide in the concepts conveyed by their figurative elements and the word elements ‘the’ and ‘home’. Since these elements have been found non-distinctive respectively weak, their impact in differentiation the signs is minimal. However, there are no other conceptual differences which would help the consumers to distinguish the marks as the remaining verbal, distinctive, element ‘store’ will be not understood.  

Admittedly, there are differences between the signs that will not go unnoticed by the relevant public. Nevertheless, the likelihood of confusion covers indeed situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

It is a common practice nowadays for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, modernized image.

Since the verbal elements ‘the home store’ will be easily recognized and perceived in both signs, the Opposition Division finds that the relevant consumer may perceive the contested sign as a variation or a new version of the earlier mark. Consequently, the public may attribute the same (or economically linked) commercial origin to the relevant goods and services, even where the public’s degree of attention is higher and even when the contested services have been found to be similar to a low degree with the earlier goods.

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 No 1 268 605. 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 services found to be similar to a low degree to some of the goods of the earlier trade mark.

The rest of the contested 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 services cannot be successful.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sigrid DICKMANNS

Renata COTTRELL

Claudia MARTINI

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.