OPPOSITION DIVISION
OPPOSITION No B 2 247 040
Laser Build – Comércio de Equipamentos Industriais, Unipessoal, Lda., Rua
Nova Do Real, 201 – R/C, 4470-632 Maia, Portugal (opponent), represented by J.
Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisbon, Portugal
(professional representative)
a g a i n s t
Villeroy & Boch AG, Saaruferstr. 14 – 18, 66693 Mettlach, Germany (applicant),
represented by Taylor Wessing, Benrather Str. 15, 40213 Düsseldorf, Germany
(professional representative).
On 11/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 247 040 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; Mugs; Beer mugs;
Flower pots; Candy boxes; Cutting boards for the kitchen; Bread
bins; Bread baskets, domestic; Butter dishes; Soap boxes; Tea
caddies; Sugar bowls; Egg cups; Pails; Cruets; Cruet sets for oil
and vinegar; Chopsticks; Flasks; Bottles; Vacuum bottles; Bottle
openers; Kitchen containers; Vegetable dishes; Kitchenware,
cooking pot sets; Tableware, other than knives, forks and spoons;
Spice sets; Jars, Crocks; Glass bowls; Glassware (painted); Crystal
[glassware]; Menu card holders; Coffee services; Jugs; Decanters;
Cheese-dish covers; Cookie jars; Ceramics for household
purposes; Candle sticks; Cookery moulds; Baskets for domestic
use; Fitted picnic baskets; Cake molds [moulds]; Knife rests for the
table; Dredgers; Fruit cups; Pepper pots; Napkin holders; Dishes
and food trays; Lunch boxes; Salad bowls; dispensers for salt;
Basins [bowls]; Pan-mats, Table utensils; Soap boxes; Soap
holders and soap dishes; Soap dispensers; Dinner services; Lazy
susans; Napkin rings; Soup bowls; Salvers; Dinner services; Cups;
Teapots; Tea services; Table plates; Toilet paper holders; Toilet
paper dispensers; Pots; Crockery; Pottery; Drinking vessels;
Drinking glasses; Saucers; Vases; Sugar bowls.
2. European Union trade mark application No 11 868 007 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
Decision on Opposition No B 2 247 040 page: 2 of 10
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 some of the goods of European Union trade
mark application No 11 868 007 ‘Gallo’, namely against all the goods in Classes 11,
21 and 24. The opposition is based on European Union trade mark registration
No 10 280 352 ‘GALO’. 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.
a) The goods
The goods on which the opposition is based are the following:
Class 6: Holders of metal for towels; metal-made dispensers for towels.
Class 21: Bathroom and lavatory fittings, namely towel holders, dispensers for liquid
soap, soap dishes, toothbrush mugs and stands therefor, toilet paper holders,
storage units for toilets, toilet brush fittings, pedal bins (refuse bins); small domestic
utensils and portable containers for household purposes, of metal.
The contested goods are the following:
Class 11: Apparatus for supplying water; Sanitary apparatus and installations;
Fittings for wash basins, sinks, bath tubs, showers; Bath tubs; Bath installations;
Bath fittings; Wash basins, parts of sanitary installations; Bidets; Showers; Shower
cubicles; Shower trays, Water taps; Pipe line cocks [spigots]; Spa baths [vessels];
Hand-operated valves and mixer valves for sanitary water supply; Regulating
accessories for water apparatus and for water pipes; Sauna bath installations;
Siphons; Bath tubs for sitz baths; Basins, sinks; Lavatories; WC pans; Toilet seats;
Flushing apparatus; Flushing tanks; Urinals (sanitary fixtures), Sanitary facilities;
Urinal covers; Mixer taps for water pipes; Water conduits installations; Water supply
installations; Water distribution installations; Whirlpool-jet apparatus; Parts and
accessories for the aforesaid goods, included in class 11; Illumination devices;
Lighting fittings; Lamps, electric; Lamps; Sconce lighting fixtures.
Decision on Opposition No B 2 247 040 page: 3 of 10
Class 21: Household or kitchen utensils and containers; un-worked or semi-worked
glass (except glass used in building); Glassware, porcelain and earthenware, not
included in other classes; Mugs; Beer mugs; Flower pots; Candy boxes; Cutting
boards for the kitchen; Bread bins; Bread baskets, domestic; Butter dishes; China
ornaments; Soap boxes; Tea caddies; Sugar bowls; Egg cups; Pails; Cruets; Cruet
sets for oil and vinegar; Chopsticks; Figurines, statuettes of porcelain, earthenware
or glass; Flasks; Bottles; Vacuum bottles; Bottle openers; Kitchen containers;
Vegetable dishes; Kitchenware, cooking pot sets; Tableware, other than knives, forks
and spoons; Spice sets; Jars, Crocks; Glass bowls; Glassware (painted); Crystal
[glassware]; Menu card holders; Coffee services; Jugs; Decanters; Cheese-dish
covers; Cookie jars; Ceramics for household purposes; Candle sticks; Cookery
moulds; Baskets for domestic use; Fitted picnic baskets; Cake molds [moulds];
Works of art, of porcelain, terra-cotta or glass; Knife rests for the table; Dredgers;
Fruit cups; Pepper pots; Napkin holders; Dishes and food trays; Lunch boxes; Salad
bowls; dispensers for salt; Basins [bowls]; Pan-mats, Table utensils; Soap boxes;
Soap holders and soap dishes; Soap dispensers; Dinner services; Lazy susans;
Napkin rings; Soup bowls; Salvers; Dinner services; Cups; Teapots; Tea services;
Table plates; Toilet paper holders; Toilet paper dispensers; Pots; Crockery; Pottery;
Drinking vessels; Drinking glasses; Saucers; Hurricane lamps; Vases; Sugar bowls.
Class 24: Bath linen (except clothing); Bed and table covers; Bed covers; Bed linen;
Covers for cushions; Shower curtains of textile or plastic; Curtains of textile or plastic;
Curtain holders of textile material; Household linen; Coasters (table linen); Mattress
covers; Furniture coverings of plastic; Furniture coverings of textile; Place mats;
Travelling rugs [lap robes]; Quilts; Towels of textile; Table napkins of textile;
Handkerchiefs of textile; Table cloths (not of paper); Table runners; Serviettes of
textile; Table cloths not of paper; Table linen, not of paper; Fitted toilet lid covers of
fabric; Oilcloths; Wall hangings of textile; Textiles and textile goods, not included in
other classes.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, used in the opponent’s list of goods 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.
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 goods in Class 11
Apparatus for supplying water; sanitary apparatus and installations; bath tubs; bath
installations; wash basins, parts of sanitary installations; bidets; showers; shower
cubicles; shower trays, water taps; pipe line cocks [spigots]; spa baths [vessels];
hand-operated valves and mixer valves for sanitary water supply; sauna bath
Decision on Opposition No B 2 247 040 page: 4 of 10
installations; bath tubs for sitz baths; basins, sinks; lavatories; WC pans; flushing
apparatus; flushing tanks; urinals (sanitary fixtures), sanitary facilities; mixer taps for
water pipes; water conduits installations; water supply installations; water distribution
installations; whirlpool-jet apparatus are all fixed installations for sanitary purposes.
They have nothing in common with any of the opponent’s goods in Classes 6 and 21,
which are immovable household utensils and accessories. They do not have the
same natures, purposes or methods of use. They differ in their usual origins and are
not in competition or complementary. Therefore, they are dissimilar.
The contested fittings for wash basins, sinks, bath tubs, showers; bath fittings;
regulating accessories for water apparatus and for water pipes; siphons; toilet seats;
urinal covers; parts and accessories for the aforesaid goods, included in Class 11
(namely for apparatus for supplying water; sanitary apparatus and installations;
fittings for wash basins, sinks, bath tubs, showers; bath tubs; bath installations; bath
fittings; wash basins, parts of sanitary installations; bidets; showers; shower cubicles;
shower trays, water taps; pipe line cocks [spigots]; spa baths [vessels]; hand-
operated valves and mixer valves for sanitary water supply; regulating accessories
for water apparatus and for water pipes; sauna bath installations; siphons; bath tubs
for sitz baths; basins, sinks; lavatories; WC pans; toilet seats; flushing apparatus;
flushing tanks; urinals (sanitary fixtures), sanitary facilities; urinal covers; mixer taps
for water pipes; water conduits installations; water supply installations; water
distribution installations; whirlpool-jet apparatus) are all parts, fittings and accessories
for the abovementioned fixed installations. They have nothing in common with the
opponent’s goods. Their purposes, methods of use and natures are different. They
are not produced by the same companies. Furthermore, they are not in competition
or complementary. Therefore, they are dissimilar.
The contested illumination devices; lighting fittings; lamps, electric; lamps; sconce
lighting fixture are all pieces of lighting apparatus or equipment. They have nothing in
common with any of the opponent’s goods. They are produced by different
companies, and have different natures, purposes and methods of use. They are not
complementary to or in competition with each other. Therefore, they are dissimilar.
Contested goods in Class 21
The contested mugs include, as a broader category, the opponent’s toothbrush
mugs. 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 soap dispensers include, as a broader category, the opponent’s
dispensers for liquid soap. 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 soap holders include, as a broader category, the opponent’s soap
dishes. Since the Opposition Division cannot dissect ex officio the broad category of
the contested goods, they are considered identical to the opponent’s goods.
Soap dishes; toilet paper holders are identically contained in both lists of goods.
The contested toilet paper dispensers include, as a broader category, the opponent’s
toilet paper holders. Since the Opposition Division cannot dissect ex officio the broad
category of the contested goods, they are considered identical to the opponent’s
goods.
Decision on Opposition No B 2 247 040 page: 5 of 10
The contested household or kitchen utensils and containers; beer mugs; flower pots;
candy boxes; bread bins; bread baskets, domestic; butter dishes; soap boxes(listed
twice); tea caddies; sugar bowls (listed twice); egg cups; pails; cruets; cruet sets for
oil and vinegar; chopsticks; flasks; bottles; vacuum bottles; bottle openers; kitchen
containers; vegetable dishes; kitchenware, cooking pot sets; tableware, other than
knives, forks and spoons; spice sets; jars; menu card holders; coffee services; jugs;
cheese-dish covers; cookie jars; candle sticks; cookery moulds; baskets for domestic
use; fitted picnic baskets; cake molds [moulds]; knife rests for the table; dredgers;
fruit cups; pepper pots; napkin holders; dishes and food trays; lunch boxes; salad
bowls; dispensers for salt; basins [bowls]; pan-mats, table utensils; dinner services
(listed twice); lazy susans; napkin rings; soup bowls; salvers; cups; teapots; tea
services; table plates; pots; drinking vessels; drinking glasses; saucers; vases are all
small household utensils or portable containers, which may consist of metal. They
are included in or overlap with the opponent’s small domestic utensils and portable
containers for household purposes, of metal. Therefore, they are identical.
The contested glassware, porcelain and earthenware, not included in other classes;
crocks; glass bowls; glassware (painted); crystal [glassware]; ceramics for household
purposes; crockery; pottery all include household utensils. Even though the
production of the contested goods requires specific processes differing from those
used in the production of metallic objects, they could have the same purposes and
methods of use as the opponent’s goods in the broad category of small domestic
utensils and portable containers for household purposes, of metal, which include
mugs, vases, and bowls. They target the same public and can be in competition.
Therefore, they are similar to a low degree
The contested cutting boards for the kitchen; decanters are household utensils,
which often have the same distribution channels and target the same public as the
opponent’s small domestic utensils and portable containers for household purposes,
of metal. Therefore, they are similar to a low degree.
The contested hurricane lamps can be considered household utensils, but they do
not have the same natures, purposes or methods of use as any of the opponent’s
goods in Classes 6 and 21. Neither are they in competition with each other.
Therefore, they are dissimilar.
The contested un-worked or semi-worked glass (except glass used in building) is a
material used for creating products and is not the end-product itself, as all the
opponent’s goods are. These goods target different publics, and have different
distribution channels, purposes and methods of use. Furthermore, they are not in
competition. Therefore, they are dissimilar.
The contested china ornaments; figurines, statuettes of porcelain, earthenware or
glass; works of art, of porcelain, terra-cotta or glass are all goods for decorative
purposes rather than utensils, as all the opponent’s goods are. These goods have
different purposes and methods of use and are not in competition. They are not
generally produced by the same companies. Therefore, they are dissimilar.
Contested goods in Class 24
The contested bath linen (except clothing); bed and table covers; bed covers; bed
linen; covers for cushions; shower curtains of textile or plastic; curtains of textile or
plastic; curtain holders of textile material; household linen; coasters (table linen);
mattress covers; furniture coverings of plastic; furniture coverings of textile; place
Decision on Opposition No B 2 247 040 page: 6 of 10
mats; travelling rugs [lap robes]; quilts; towels of textile; table napkins of textile;
handkerchiefs of textile; table cloths (not of paper); table runners; serviettes of textile;
table cloths not of paper; table linen, not of paper; fitted toilet lid covers of fabric;
oilcloths; wall hangings of textile; textiles and textile goods, not included in other
classes are all textiles or substitutes for textiles, household linen or curtains of textile
or plastic, which have nothing in common with any of the opponent’s goods in
Classes 6 and 21. Although these goods are intended for bathrooms or household
purposes, they are not normally produced by the same companies as the opponent’s
non-textile bathroom articles or metallic household utensils and containers. They
have different natures, purposes and methods of use. Furthermore, they are not 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.
In the present case, the goods found to be identical or similar are directed at the
public at large.
The degree of attention is considered average.
c) The signs
GALO Gallo
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).
As both signs are word marks, it is the word as such that is protected and not its
written form. Therefore, it is irrelevant whether it is presented in upper or lower case
characters.
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.
Decision on Opposition No B 2 247 040 page: 7 of 10
The signs are not meaningful in certain territories, for example in those countries
where the Romance languages or English are not understood. Consequently, the
Opposition Division finds it appropriate to focus the comparison of the signs on the
German- and Polish-speaking parts of the public.
Neither of the signs has a meaning for the relevant public and they are, therefore,
distinctive.
Visually, the signs coincide in the letters ‘GAL*O’. However, they differ in the fourth
letter, ‘L’, of the contested sign, which has no counterpart in the earlier sign.
Therefore, the signs are visually highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in at least the sound of the
letters ‛G*LO’, present identically in both signs. However, the pronunciation of the
signs differs in that in German double consonants generally shorten the sound of the
vowel preceding them, whereas a vowel preceding one consonant alone is
pronounced with a long sound. Therefore, the double ‘L’ in the contested sign, in
contrast to the single ‘L’ in the earlier sign, affects the sound of the letter ‘A’, but ‘LL’
and ‘L’ are pronounced identically. In Polish, the sound of the letter ‘A’ is identical in
both signs, but the difference lies in the different pronunciations of the double ‘L’ and
the single ‘L’. Therefore, in both German and Polish, the pronunciation differs in the
sound of only one letter.
Therefore, the signs are aurally similar to at least an average degree.
Conceptually, neither of the signs has a meaning for the public in the relevant
territory. Since a conceptual comparison is not possible, the conceptual aspect does
not influence the assessment of the similarity of the signs.
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.
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.
e) Global assessment, other arguments and conclusion
The signs are visually highly similar and aurally similar to at least an average degree.
The conceptual aspect does not influence the assessment of the similarity of the
signs. Some of the goods are identical and similar to a low degree.
Decision on Opposition No B 2 247 040 page: 8 of 10
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).
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).
Considering all the above, the Opposition Division finds that the similarities between
the signs clearly outweigh the only difference, namely the additional letter ‘L’ in the
contested sign, and a likelihood of confusion exists for at least the German- and
Polish-speaking parts of the public. Contrary to the applicant’s argument, the signs in
question are not particularly short, and therefore a one-letter difference does not
suffice to create different overall impressions, especially as the additional letter is
positioned in the middle of the contested sign. In addition, the difference lies in the
single letter ‘L’ of the earlier mark and the double letter ‘L’ of the contested sign. This
difference is, aurally and visually, less likely to be noticed than, for instance, a letter in
one sign that does not appear in the other sign at all. The similarities between the
signs so clearly overweigh the only difference that likelihood of confusion exists even
in case the goods are similar only to a low degree. 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.
In its observations, the applicant argues that it owns several registrations with the
word ‘GALLO’ in the German, Danish and Finnish registries and in the international
registry at the WIPO, which coexist with the opponent’s earlier mark.
According to case-law, the possibility cannot be entirely dismissed that, in certain
cases, the coexistence of earlier marks on the market could reduce the likelihood of
confusion which the Opposition Division and the Board of Appeal find exists between
two conflicting marks. However, that possibility can be taken into consideration only
if, at the very least, during the proceedings before the EUIPO concerning relative
grounds of refusal, the applicant for the European Union trade mark duly
demonstrated that such coexistence was based upon the absence of any likelihood
of confusion on the part of the relevant public between the earlier marks upon which
it relies and the intervener’s earlier mark on which the opposition is based, and
provided that the earlier marks concerned and the marks at issue are identical
(11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).
In this regard it should be noted that formal coexistence on national or Union
registries of certain marks is not per se particularly relevant. It should also be proved
that they coexist in the market, which could actually indicate that consumers are used
to seeing the marks without confusing them. Last but not least, it is important to note
that the Office is in principle restricted in its examination to the trade marks in conflict.
Only under special circumstances may the Opposition Division consider evidence of
the coexistence of other marks in the market (and possibly in the register) on a
national/Union level as an indication of ‘dilution’ of the distinctive character of the
opponent’s mark that might be contrary to an assumption of likelihood of confusion.
Decision on Opposition No B 2 247 040 page: 9 of 10
This has to be assessed on a case-by-case basis and such an indicative value
should be treated with caution as there may be different reasons as to why similar
signs coexist, e.g. different legal or factual situations in the past, or prior rights
agreements between the parties involved.
Therefore, in the absence of convincing arguments and evidence thereof, this
argument of the applicant must be rejected as unfounded.
Furthermore, the applicant argues that its EUTM would be recognised as belonging
to its series or family of marks.
The right to an EUTM begins on the date when the EUTM is filed and not before, and
from that date on the EUTM has to be examined with regard to opposition
proceedings.
Therefore, when considering whether or not the EUTM falls under any of the relative
grounds for refusal, events or facts which happened before the filing date of the
EUTM are irrelevant because the rights of the opponent, insofar as they predate the
EUTM, are earlier than the applicant’s EUTM.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar to those of the earlier trade mark.
The rest of the contested goods 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 cannot be successful.
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, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Loreto URRACA LUQUE Rita MIKKOLAHolst
FILTENBORG
Ana MUÑIZ RODRIGUEZ
Decision on Opposition No B 2 247 040 page: 10 of 10
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
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.