OPPOSITION No B 2 751 454

Blue Rhino Global Sourcing, Inc., 10 Hub Drive, Suite 101, Melville, New York 11747, United States of America (opponent), represented by Vossius & Partner Patentanwälte Rechtsanwälte mbB, Siebertstr. 3, 81675 Munich, Germany (professional representative)

a g a i n s t

The Direct Marketing Company S.P.A. (aka DMC S.P.A.), Strada dei Censiti, 5/A, 47891 Rovereta, San Marino (applicant), represented by Studio Ferrario S.R.L., Via Collina, 36, 00187 Rome, Italy (professional representative).

On 21/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 751 454 is partially upheld, namely for the following contested goods and services:

Class 7:         Electric food processors; mixers [machines]; beaters, electric; whisks, electric, for household purposes; grating machines for vegetables; coffee grinders, other than hand-operated; mills for household purposes, other than hand-operated; meat choppers [machines]; food grinders; sharpening machines; electric knife sharpeners; machine tools.

Class 8:         Hand tools and implements (hand-operated); hand tools, hand-operated; knife steels; sharpening steels; sharpening instruments; cutlery (listed twice); knives; ceramic knives; blades [hand tools]; edge tools [hand tools].

Class 11:         Apparatus for cooking; friction lighters for igniting gas; gas lighters; igniters; baking ovens; electric pressure cooking saucepans; electric cooking utensils.

Class 21:        Household or kitchen utensils; polishing apparatus and machines, for household purposes, non-electric; brushes; brushes (except paintbrushes); brushes for cleaning pots; scrapers for pots and pans; basting brushes; non-electric food mixers; whisks, non-electric, for household purposes; blenders, non-electric, for household purposes; non-electric food mixers; whisks, non-electric, for household purposes; pepper mills, hand-operated; coffee grinders, hand-operated; kitchen grinders, non-electric; crushers for kitchen use, non-electric; kitchen graters; cloth for washing floors.

Class 35:         Computerised online retailing, online retailing in relation to hand-held kitchen utensils, other than electrically operated; wholesaling and retailing, including by mail order and via communications media, including the internet, of hand-held kitchen utensils, other than electrically operated.

2.        European Union trade mark application No 15 036 891 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 036 891, namely against all the goods in Classes 7, 8, 11 and 21 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 14 764 336. 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.

1. The goods and services

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

Class 6: Butane fuel cans of metal; hostess signs of metal; two sided A-frame signs of metal.

Class 8: Hand-operated professional choppers; hand-operated knife sharpeners; hand-operated grilling claws.

Class 11: Portable gas stoves, induction heaters for food, and gas operated lighters and torches for use in food preparation; heat lamps.

Class 20: Marker boards.

Class 21: Griddle scrappers and hand operated salad spinners; whipped cream dispensers, whipped cream chargers; commercial cleaning brushes, grill brushes, broiler brushes, pizza oven brushes; basting mops; seasoning or marinade injectors.

Class 30: Meat tenderizers.

The contested goods and services are the following:

Class 7: Machine tools; mixers [machines]; agitators; steam cleaning machines; apparatus for aerating water; apparatus for aerating beverages; electric can openers; beaters, electric; die-cutting and tapping machines; electric scissors; whisks, electric, for household purposes; paste working machines; grating machines for vegetables; sharpening machines; electric knife sharpeners; bread cutting machines; bottle stoppering machines; coffee grinders, other than hand-operated; mills for household purposes, other than hand-operated; meat choppers [machines]; electric food processors; electric machines for sealing bags for foodstuffs; food grinders.

Class 8: Hand tools and implements (hand-operated); cutlery; side arms; razors; sharpening steels; knife steels; silver plate [knives, forks and spoons]; cutlery; knives; drawing knives; ceramic knives; spoons; table cutlery [knives, forks and spoons]; ladles [hand tools]; table forks; blades [hand tools]; edge tools [hand tools]; sharpening instruments; hand tools, hand-operated.

Class 11: Apparatus for steam generating, cooking, drying and water supply; friction lighters for igniting gas; gas lighters; igniters; electric coffee urns; baking ovens; microwave ovens for industrial purposes; electric deep fryers; rotisseries; roasting jacks; bread baking machines; refrigerating containers; water heaters; food warmers; roasting spits; toasters; electric cooking utensils; electric yoghurt makers; electric pressure cooking saucepans; air fryers.

Class 21: Household or kitchen utensils and containers; brushes (except paintbrushes); glass ware; porcelain and earthenware not included in other classes; non-electric food mixers; whisks, non-electric, for household purposes; polishing apparatus and machines, for household purposes, non-electric; bottle openers, electric and non-electric; pipettes [wine-tasters]; bread boards; cutting boards for the kitchen; basins [bowls]; cocktail stirrers; chopsticks; cooking pot sets; beverage glassware; beer mugs; cups of paper or plastic; tankards; jars (glass -) [carboys]; bottles; glass flasks [containers]; insulating flasks; refrigerating bottles; coffeepots, non-electric; mugs; jars; lazy susans; saucepans; corkscrews, electric and non-electric; bread baskets, domestic; waste paper baskets; baskets for domestic use; strainers; covers for dishes; fruit cups; cheese-dish covers; tea cosies; basting spoons [cooking utensils]; mixing spoons [kitchen utensils]; kettles, non-electric; blenders, non-electric, for household purposes; deep fryers, non-electric; non-electric food mixers; whisks, non-electric, for household purposes; kitchen graters; oven mitts; funnels; salad bowls; coffee percolators, non-electric; pepper mills, hand-operated; coffee grinders, hand-operated; rolling pins, domestic; shakers; frying pans; scoops [tableware]; tart scoops; pots of metal; glass pots; non-electric steam cookers; non-electric cooking pots and pans; bains-marie; scrapers for pots and pans; brushes for cleaning pots; rice cooking pots [non-electric]; sets of pots for use in microwave ovens; hot pots, not electrically heated; cookie pans; cooking boxes; baking trays of silicone; for muffins; baking trays for puddings; tart tins; cake moulds; basting brushes; cake brushes; cookie [biscuit] cutters; plates; saucers; knife rests for the table; napkin holders; toothpick holders; egg cups; potholders; drinking vessels; bread bins; lunch boxes; kitchen containers; salt shakers; thermally insulated containers for food; cookie jars; coffee services [tableware]; liqueur sets; tea services [tableware]; oil cruets; brushes; cloth for washing floors; saucepans (earthenware -); cups; teapots; kitchen grinders, non-electric; crushers for kitchen use, non-electric; food steamers, non-electric; tableware, other than knives, forks and spoons; pottery; pots; soup bowls.

Class 35: Computerised online retailing, online retailing in relation to electric kitchen utensils and hand-held kitchen utensils, other than electrically operated; Sales promotion; Wholesaling and retailing, including by mail order and via communications media, including the internet, of electric kitchen utensils, hand-held kitchen utensils, other than electrically operated, and small electric household appliances.

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 goods and services, namely in the list of services in Class 35, 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).

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.

The opponent’s goods in Classes 6, 20 and 30

As a preliminary remark, it has to be noted that the opponent’s goods in Class 6 are butane fuel cans and signs of metal, those in Class 20 are marker boards, namely flat surfaces on which one can draw or write with a marker, and those in Class 30 are meat tenderizers, namely substances used in the cooking or preparation of meat to make it more tender. The Opposition Division considers that none of these goods has anything in common with the contested goods listed above. These goods have different natures, methods of use and purposes; furthermore, they do not coincide in their relevant publics or distribution channels and no assumption of identical origin is likely to be made by the consumers of these goods. In addition, they are not complementary to or in competition with each other. Therefore, the opponent’s goods in Classes 6, 20 and 30 are dissimilar to all of the contested goods and services.

Contested goods in Class 7

The contested electric food processors are kitchen appliances used to facilitate repetitive tasks in the preparation of food. The opponent’s goods in Class 8 are also various types of hand-operated kitchen appliances. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, this broad category is considered similar in some way to the opponent’s goods in Class 8, in particular to the opponent’s hand-operated professional choppers. It cannot be completely ruled out that some of these goods may coincide in their relevant purpose, target the same relevant public and be available in the same outlets selling household appliances. Furthermore, they may be produced by the same undertakings specialised in the manufacturing of such products. Therefore, they are similar.

Likewise, the contested mixers [machines]; beaters, electric; whisks, electric, for household purposes; grating machines for vegetables; coffee grinders, other than hand-operated; mills for household purposes, other than hand-operated; meat choppers [machines]; food grinders are considered similar to the opponent’s hand-operated professional choppers in Class 8. All these goods are kitchen appliances that may be used at different stages of food processing or preparation in the household, in particular to mix, cut, beat, grind or chop foods, and thus they may have the same purpose as the opponent’s hand-operated professional choppers in Class 8, which are food preparation implements. Furthermore, as well as having identical publics and distribution channels, these goods are in competition with each other.

The contested sharpening machines; electric knife sharpeners are at least similar to the opponent’s hand-operated knife sharpeners, as these goods may serve the same purpose, namely to sharpen knives. They target the same public and may have the same distribution channels. Furthermore, they are in competition with each other.

The contested machine tools are a broad category that can include, inter alia, various types of tools used in the kitchen. Since the Opposition Division cannot dissect the broad category of the contested goods, they are considered similar to a low degree to the opponent’s goods in Class 8, which are also kitchen appliances. These goods may coincide in their relevant public and distribution channels, as well as in their manufacturers.

However, the contested agitators; apparatus for aerating water; apparatus for aerating beverages; electric can openers; electric scissors; die-cutting and tapping machines; paste working machines; bread cutting machines; bottle stoppering machines; electric machines for sealing bags for foodstuffs differ from all of the opponent’s goods, as they have purposes different from processing food for household purposes. Most of these contested goods are instead used for specific industrial purposes and, as such, they are likely to target a professional public, for instance experts involved in the production and delivery of particular foodstuffs. Furthermore, their distribution channels also differ from those of the opponent’s goods and they are not in competition with or complementary to any of the opponent’s goods. These goods are considered dissimilar.

The contested steam cleaning machines are cleaning appliances that may be used either in the household or for industrial purposes. These goods completely differ from the opponent’s goods, as they have different natures, intended purposes and methods of use; they target different publics and have different distribution channels. When they are available in the same outlets, they are found in different household product sections. They are considered dissimilar.

Contested goods in Class 8

The contested hand tools and implements (hand-operated); hand tools, hand-operated include, as broader categories, or overlap with the opponent’s hand-operated professional choppers. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested knife steels; sharpening steels; sharpening instruments overlap, to some extent, with the opponent’s hand-operated knife sharpeners, as all of these goods are tools that may be used for sharpening, inter alia, knives. They are identical.

The contested cutlery (listed twice); spoons; table cutlery [knives, forks and spoons]; silver plate [knives, forks and spoons]; ladles [hand tools]; table forks; knives; ceramic knives are various hand-held implements that can be used for preparing, serving, eating or cutting food. Although cutlery usually includes the knives, forks and spoons that a person may use when dining, it may also refer to a set of knives used in the kitchen when cooking.

In the latter case, the contested cutlery (listed twice); knives; ceramic knives are similar to the opponent’s hand-operated knife sharpeners, as these goods may be, to some extent, complementary to each other. Furthermore, these goods may target the same public and may be found in the same cutlery set of knives.

As far as the remaining cutlery goods are concerned, they are not similar to the opponent’s goods in Class 8, as they have different natures, methods of use and purposes within the kitchen. The contested spoons; table cutlery [knives, forks and spoons]; silver plate [knives, forks and spoons]; ladles [hand tools]; table forks are usually produced by different undertakings from the opponent’s goods and, even when they are sold in the same stores, they are arranged on different shelves and are designated as a different category of products from the opponent’s goods. These contested goods are even more dissimilar to the opponent’s other goods, with which they have even less in common.

The contested blades [hand tools]; edge tools [hand tools] are parts of and accessories for hand tools and, as such, they have some degree of similarity to the opponent’s hand-operated professional choppers. These goods may target the same publics and may be available through the same purchasing channels; furthermore, it cannot be excluded that these goods are produced by the same manufacturers. They are similar to a low degree.

The contested side arms are weapons, usually handguns but sometimes daggers, knives or other melee weapons, that are worn on the side of the body. The contested razors are tools used, in particular, for shaving. The contested drawing knives are woodcutting tools with two handles at right angles to the blade used to shape wood by removing shavings. These goods differ in their natures, methods of uses and relevant purposes from the opponent’s goods; it is unlikely that they will be found in the same outlets and that they will target the same relevant public or be produced by the same manufacturers. Therefore, they are considered dissimilar.

Contested goods in Class 11

The contested apparatus for cooking includes, as a broader category, or overlaps with the opponent’s portable gas stoves. 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 friction lighters for igniting gas; gas lighters; igniters overlap with the opponent’s gas operated lighters. They are identical.

The contested baking ovens are similar to the opponent’s portable gas stoves. These goods may be used as alternative ways of cooking food in the household and they are in direct competition. Furthermore, they target the same group of consumers and they are usually sold in the same outlets selling kitchen appliances. Likewise, the contested electric pressure cooking saucepans are similar to the opponent’s portable gas stoves, as these goods may be used for the same cooking purposes. Furthermore, they are in competition.

The contested electric cooking utensils are a broad category that covers various pieces of apparatus and utensils used for cooking. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, this broad category may contain goods (ovens, stoves, etc.) that coincide in their relevant purposes, publics and distribution channels with the opponent’s portable gas stoves. It cannot be completely ruled out that there might be some degree of competition between the goods in question, to the extent they are used at the same food preparation stage. Therefore, they are similar to a low degree to the opponent’s goods.

However, the contested toasters; electric yoghurt makers; electric coffee urns; electric deep fryers; air fryers; bread baking machines; roasting spits are kitchen utensils used for different purposes during cooking, for instance baking or toasting bread and frying, from the opponent’s goods. These goods differ in their natures, relevant purposes and methods of use, although they might be available in the same household outlets and may target the same public. The public in question will not usually expect these goods to originate from the same undertakings. Furthermore, the contested goods are not in competition with or complementary to any of the opponent’s goods, in particular, in Classes 8, 11 or 21, which have nothing in common commercially. These goods are dissimilar.

The contested microwave ovens for industrial purposes; refrigerating containers; rotisseries; roasting jacks; food warmers are appliances that target the professional public concerned with foodstuff processing, preparation and/or delivery; they most likely serve various industrial or other commercial purposes. These goods have different distribution channels from the opponent’s goods and it is unlikely that these goods are manufactured by the same undertakings. Furthermore, these goods are not in competition with or complementary to each other. They are dissimilar.

The contested apparatus for steam generating, drying and water supply; water heaters are dissimilar to all of the opponent’s goods, as they have different natures, purposes and methods of uses. These contested pieces of apparatus are parts of installations and supply systems in the household, for instance water supply, heating, electricity, etc. They differ from all the opponent’s goods that are used for food processing and preparation. They are not in competition with each other, nor are they complementary.

Contested goods in Class 21

The opponent’s goods in Class 21 comprise two different categories of goods: first, very specific kitchen utensils used for the preparation of food, such as hand operated salad spinners (a kitchen tool used to wash and remove excess water from salad greens), whipped cream dispensers and chargers and seasoning or marinade injectors (a tool used to inject seasoning or a marinade into a piece of meat) and, second, cleaning articles used for various purposes, such as the opponent’s commercial cleaning brushes, grill brushes, broiler brushes, pizza oven brushes and griddle scrappers. On the other hand, the opponent’s goods in Class 8 are hand-operated kitchen utensils used for chopping food, sharpening knives or grilling. The opponent’s goods in Class 11 are cooking appliances or tools, some of them using gas.

The contested household or kitchen utensils make up a broad category that may contain or overlap with some of the opponent’s goods in Class 21, for instance the opponent’s hand-operated salad spinners. The contested polishing apparatus and machines, for household purposes, non-electric; brushes; brushes (except paintbrushes) include, as broader categories, or overlap with the opponent’s commercial cleaning brushes. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s relevant goods.

The contested brushes for cleaning pots are included in, or overlap with, the opponent’s commercial cleaning brushes. They are identical.

The contested scrapers for pots and pans are included in, or overlap with, the opponent’s griddle scrappers. They are identical.

The contested basting brushes are highly similar to the opponent’s basting mops, as these goods are usually used for the same purpose, namely basting meat. They have the same natures, methods of use and relevant purposes and, furthermore, they coincide in their relevant publics and distribution channels. These goods are in competition with each other.

The contested non-electric food mixers; whisks, non-electric, for household purposes; blenders, non-electric, for household purposes; non-electric food mixers; whisks, non-electric, for household purposes; pepper mills, hand-operated; coffee grinders, hand-operated; kitchen grinders, non-electric; crushers for kitchen use, non-electric; kitchen graters are non-electric kitchen appliances that may be used for different types of food processing such as mixing, cutting, crushing, grinding or chopping food into smaller pieces. They may have the same purpose as the opponent’s hand-operated professional choppers in Class 8, which can also be non-electric food preparation implements. Furthermore, these goods coincide in their publics and distribution channels and they can be in competition with each other. It cannot be completely ruled out that the public might assume that the goods are produced by the same manufacturers of kitchen appliances. Therefore, the contested goods are considered similar to the opponent’s hand-operated professional choppers.

The contested cloth for washing floors is similar to a low degree to the opponent’s commercial cleaning brushes. These goods may serve the same cleaning purposes; they target the same public and are distributed through the same outlets.

The contested glass ware consists of objects made of glass, such as the contested beverage glassware, glass pots; jars (glass -) [carboys]; glass flasks [containers]. The contested pottery and porcelain and earthenware not included in other classes refer to objects (pots, dishes, bowls, etc.) made of mud or clay processed in different ways. These goods are different from all of the opponent’s goods in Classes 8, 11 and 21, as they have different natures, methods of uses and relevant purposes. Furthermore, these goods usually have different distribution channels and are not in competition with or complementary to each other. They are dissimilar.

The contested household containers; kitchen containers (listed twice) bread bins; lunch boxes; bottles; insulating flasks; refrigerating bottles; thermally insulated containers for food; jars; cookie jars; cooking boxes; shakers; salt shakers; oil cruets are different types of household containers used to store or hold liquids or food and ingredients.

The contested pots; pots of metal; non-electric steam cookers; non-electric cooking pots and pans; bains-marie; rice cooking pots [non-electric]; sets of pots for use in microwave ovens; hot pots, not electrically heated; food steamers, non-electric; saucepans (earthenware -); saucepans; cooking pot sets; deep fryers, non-electric; frying pans are deep or flat round containers used for cooking stews, soups and other food or for frying. The contested kettles, non-electric are containers used as in the kitchen to boil water; the contested coffee percolators are pieces of equipment for making and serving coffee.

The contested beer mugs; mugs; tankards; coffeepots, non-electric; non-electric; cups; teapots; drinking vessels; coffee services [tableware]; liqueur sets; tea services [tableware]; plates; saucers; egg cups; tableware, other than knives, forks and spoons are various objects that belong to the category of tableware, namely articles used on the table for dining.

The contested cups of paper or plastic; fruit cups; bottle openers, electric and non-electric; pipettes [wine-tasters]; bread boards; cutting boards for the kitchen; basins [bowls]; cocktail stirrers; chopsticks; corkscrews, electric and non-electric; bread baskets, domestic; waste paper baskets; baskets for domestic use; strainers; covers for dishes; cheese-dish covers; funnels; basting spoons [cooking utensils]; mixing spoons [kitchen utensils]; tart scoops; cake brushes; rolling pins, domestic; scoops [tableware]; lazy susans; knife rests for the table; napkin holders; toothpick holders; soup bowls; salad bowls are different kinds of auxiliary kitchen and household utensils with specific uses related to foodstuffs or beverages, for instance opening a bottle (bottle opener or corkscrew), containers used for carrying or storing objects (baskets for domestic use, bread baskets, domestic), boards used to chop ingredients, vegetables, etc. (bread boards; cutting boards for the kitchen) and bowls used to hold liquids or for mixing and storing food (basins [bowls]; soup bowls; salad bowls).

The contested cookie pans; baking trays of silicone for muffins; baking trays for puddings; tart tins; cake moulds; cookie [biscuit] cutters are different baking utensils used for making desserts such as cookies, muffins and tarts.

The contested oven mitts are protection gloves used in the kitchen to hold and lift hot objects. The contested potholders are pieces of material used to protect one’s hands while lifting a hot pot. The contested tea cosies are soft knitted or fabric covers that you put over a teapot to keep the tea hot.

All these goods differ from the opponent’s goods in Classes 8, 11 and 21. It is obvious that these goods have different natures, methods of use and specific purposes within the household or kitchen. Although the goods may coincide in their relevant publics and distribution channels, this is not sufficient to find them similar. The relevant consumers are aware that these various kitchen utensils and appliances are designed for different food-related functions and they do not expect all these goods to originate exclusively from the same manufacturer. Furthermore, the goods are not in competition with or complementary to each other. Therefore, they are dissimilar.

Contested services in Class 35

In principle, retail services concerning the sale of particular goods are similar (to a low degree) to these 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 as those where the goods are offered for sale. Furthermore, they target the same public. To find similarity between them, the goods covered by the retail services and the specific goods covered by the other mark have to be identical, that is to say, they must be exactly the same goods or must fall under the natural and usual meaning of the category.

In the present case, the contested computerised online retailing, online retailing in relation to hand-held kitchen utensils, other than electrically operated; wholesaling and retailing, including by mail order and via communications media, including the internet, of hand-held kitchen utensils, other than electrically operated are similar to a low degree to the opponent’s goods, as the retailed and marketed goods under these services are considered identical to the opponent’s goods, namely hand-operated professional choppers and hand-operated salad spinners.

However, the contested computerised online retailing, online retailing in relation to electric kitchen utensils; wholesaling and retailing, including by mail order and via communications media, including the internet, of electric kitchen utensils and small electric household appliances are dissimilar to all of the opponent’s goods, for the reasons stated above. Electric kitchen utensils and small electric household appliances are not identically covered by the opponent’s list of goods and are only similar to different degrees to the opponent’s goods; this is not sufficient to conclude that the goods and services in question are similar.

Furthermore, the contested sales promotion is dissimilar to all of the opponent’s goods. While the opponent’s goods may be promoted by means of the contested sales promotion services, this is not sufficient to find them similar. Apart from being different in nature, the contested services have different methods of use and distribution channels and are provided by different agencies from the opponent’s goods.

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.

In the present case, the goods and services found to be identical or similar to different degrees are directed at the public at large, as well as at business customers with specific professional knowledge or expertise.

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

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is a figurative mark consisting of the slightly stylised verbal elements ‘CHEF MASTER’ in black upper case letters with a dot between them and a small chef’s hat depicted underneath them. The entire expression and figurative element are placed within an oval frame.

The contested sign is a figurative mark consisting of the verbal elements ‘Chef master’ in white title case letters inside a green elliptical background, with figurative devices depicting a chef’s hat to the right of the verbal elements and tomatoes to the right and left of the verbal elements.

The coinciding elements ‘chef master’ may be entirely, partly or not understood in different territories of the European Union and, if understood, they may still have different connotations. To avoid an unnecessary assessment of the signs’ elements for each territory of the EU, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the elements are meaningless per se, such as Bulgarian, Estonian, Hungarian, Latvian and Lithuanian speakers.

The elements ‘chef’ and ‘master’ of the signs have no meanings for the relevant public in relation to the goods and services in question and are, therefore, distinctive.

The figurative elements, namely a chef’s hat in both signs and the tomatoes in the contested sign, will be associated with cooking by the relevant public. Since the relevant goods and services relate to cooking appliances and kitchen equipment, these elements have a low degree of distinctive character in relation to the goods and services in Classes 7, 8, 11, 21 and 35.

Furthermore, other than the distinctive verbal elements and the less distinctive figurative elements, the rest of the elements of both signs are purely decorative elements with a banal character, namely an oval frame and an elliptical background, as described above.

As result, the verbal elements ‘chef master’, in both signs, are more distinctive than the remaining figurative elements of the signs.

Neither of the signs has any elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the entire verbal expression ‘chef master’, framed by similarly shaped geometrical elements (an oval and an ellipse), and in the chef’s hat device. On the other hand, they differ in the stylisation of their verbal elements and in the additional figurative elements in the signs, including the tomato devices. However, 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, bearing in mind the distinctiveness of the verbal and figurative elements of the signs as noted above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the identically presented verbal elements ‘chef master’. Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning as a whole. Although the coinciding figurative element, namely the chef’s hat, will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element has a limited degree of distinctiveness and cannot indicate the commercial origin of either of the marks. Likewise, the tomato devices in the contested sign, although not present in the earlier mark, will not be capable of conveying any distinctive concept about the commercial origin of the goods and services on their own either. The relevant public’s attention will be attracted by the fanciful verbal elements, which have no meaning in relation to the goods and services, as stated above.

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 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 some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services in question are partly identical and similar to different degrees and partly dissimilar. The degree of attention is considered to vary between average and high, depending, inter alia, on the sophistication and price category of the relevant goods and services.

The conflicting signs are visually similar to an average degree and aurally identical to the extent that they both incorporate the identical and distinctive (in relation to the goods and services in question) verbal expression ‘chef master’. In addition, the remaining figurative elements of the signs are considered to have less distinctive character than the verbal elements, as stated above.

In such a case, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Furthermore, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54). In the present case, given the lack of any differing distinctive element in the signs, the commonality in their entire verbal elements is sufficient to lead to consumers to assume that these goods and services may originate from the same undertakings.

Furthermore, likelihood of confusion covers 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/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In addition, 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). In the present case, the similarity between the signs is considered sufficient to outweigh the differences between some of the goods and services in question that are similar to only a low degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian-, Estonian-, Hungarian-, Latvian- and Lithuanian-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. 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 goods and services found to be identical or similar to different degrees 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.

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 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

Volker MENSING

Patricia LOPEZ FERNANDEZ DE CORRES

Liliya  YORDANOVA

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.