OPPOSITION DIVISION
OPPOSITION No B 2 034 075
Royalton Overseas Ltd, 325 Waterfront Drive, Omar Hodge Building 2nd Floor,
Wickhams Cay, Road Town, Tortola, British Virgin Islands (opponent), represented by
Cristian Nastase, Splaiul Independentei no. 3, Bl. 17, sc. 2, ap.27, sector 4, 040011
Bucharest, Romania (professional representative)
a g a i n s t
S.C. Romarose Invest S.R.L., Bd. Unirii, Nr.71, Bloc G2C, Etaj 7, Ap. 60, Sector 3,
030829 Bucuresti, Romania (applicant), represented by Mohamad Aamdan, S.C.
Romarose Invest S.R.L., B-dul Unirii, Nr. 71, Bloc G2C, Scara 2, Etaj 7, Ap.60,
030829 Bucuresti, Romania (employee representative).
On 23/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 034 075 is rejected in its entirety.
2. The opponent bears the costs.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
On 27/06/2012 the opponent filed an opposition against all the goods and services of
European Union trade mark application No 10 739 282, ‘KAISERHOFF DRY
COOKER TIGAIA MAGICA’. Since following the partial rejections in parallel
opposition proceedings and at the date of this decision, European Union trade mark
application No 10 739 282 covers only some of the goods in Classes 11 and 21, the
opposition is considered to have been raised against all these goods. The opposition
is based on European Union trade mark registration No 9 242 066, .
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
Decision on Opposition No B 2 034 075 page: 2 of 4
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 8: Knives; table cutlery (knives, forks and spoons); vegetable knives;
choppers (knives); abrading instruments (hand instruments); agricultural
implements, hand-operated; garden tools, hand-operated; instruments
and tools for skinning animals; fire irons; can openers, non-electric;
oyster openers.
Class 21: Utensils for household purposes; cooking pot sets; tableware, other than
knives, forks and spoons; cooking utensils, non-electric; earthenware;
blenders, non-electric, for household purposes; trays for domestic
purposes; containers for household or kitchen use; coffee services; tea
services; hot pots, not electrically heated; cups, not of precious metal;
drinking vessels; vessels of metal for making ices and iced drinks; flasks;
drinking flasks for travellers; kettles, non-electric; earthenware
saucepans; frying pans; stew-pans; kitchen mixers, non-electric; griddles
(cooking utensils); bottle openers.
The contested goods, after partial rejections pursuant to the final decisions in
oppositions No B 2 039 421 and No B 2 016 593, are the following:
Class 11: Apparatus for lighting and sanitary purposes.
Class 21: Combs and sponges; brushes (except paint brushes); brush-making
materials; articles for cleaning purposes; steelwool; unworked or semi-
worked glass (except glass used in building).
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Contested goods in Class 11
The contested apparatus for lighting and sanitary purposes are devices for supplying
artificial light, for illuminating a place and items used for personal sanitation such as
bathtubs, showers, sinks and water closets. Contrary to the opponent’s statements,
they have a different nature, purposes, manufacturers and distribution channels from
the opponent’s goods in Classes 8 and 21, which cover household appliances and
utensils, such as tableware, cooking pots, household containers and hand-operated
Decision on Opposition No B 2 034 075 page: 3 of 4
tools. Furthermore, they are neither complementary nor in competition. Therefore,
they are dissimilar.
Contested goods in Class 21
The contested combs and sponges; brushes (except paint brushes); articles for
cleaning purposes; steelwool are articles generally used in cleaning, polishing and
bathing, while the opponent’s goods include variety of utensils and containers used in
the household in Class 21, as well as tableware and tools in Class 8. The contested
combs and sponges consist of combs for grooming people or animals and of light
porous highly absorbent materials used in bathing and cleaning. The contested
brushes (except paint brushes) are devices made of bristles, hair, wires, etc., set into
a firm back or handle: used to clean or polish surfaces, groom the hair, etc. The
contested articles for cleaning purposes are a broad category which comprises
several non-electric items for cleaning the home, such as brooms, carpet sweepers
or dusting cloths. The contested steelwool is a bundle of strands of thin and soft steel
filaments, used in finishing and repairing works, for polishing wood or metal objects
and for cleaning household cookware. These goods are considered to be dissimilar
to all the earlier goods in Classes 8 and 21, which cover household appliances and
utensils, such as tableware, cooking pots, household containers and hand-operated
tools. Although some of these goods may coincide partially in their nature, inasmuch
as they are all used in the household and/or in the kitchen, their ultimate purpose is
clearly different. They are not found in the same sections of shops and they are
normally not manufactured by the same undertakings. Furthermore, they are neither
complementary nor in competition. Therefore, they are dissimilar.
The contested brush-making materials consist of raw materials used for the
manufacture of brushes. Therefore, they target undertakings which manufacture
brushes, whereas the opponent’s goods in Classes 8 and 21 are finished products
with a specific purpose, targeted at the general public. Consequently, these goods
differ in their nature and intended purpose. They originate from different undertakings
and do not target the same consumers. Furthermore, they will not be found in the
same sections of department stores and they are not in competition. Therefore, they
are dissimilar.
The contested unworked or semi-worked glass (except glass used in building) is a
raw or semi-finished material which is used in the manufacture of finished goods of
glassware. The mere fact that one product may be used for the manufacture of
another (e.g. glass used in the manufacture of some of the opponent’s goods in
Class 21) is not sufficient in itself to conclude that the goods are similar, as their
nature, purpose and customers are quite distinct (13/04/2011, T-98/09, T Tumesa
Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case law, the
raw materials subject to a transformation process are essentially different from the
finished products that incorporate, or are covered by, those raw materials, in terms of
nature, aim and intended purpose (03/05/2012, T-270/10, Karra, EU:T:2012:212,
§ 53). They are not complementary since one is manufactured with the other, and
raw material is in general intended for use in industry rather than for direct purchase
by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43).
Furthermore, the opponent’s goods in Classes 8 and 21 and the contested unworked
or semi-worked glass (except glass used in building) are manufactured by different
undertakings. Therefore, these goods are dissimilar.
Decision on Opposition No B 2 034 075 page: 4 of 4
b) Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a
condition for a finding of likelihood of confusion. Since the goods are clearly
dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled,
and the opposition must be rejected.
This finding would still be valid even if the earlier trade mark were to be considered
as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods
cannot be overcome by the highly distinctive character of the earlier trade mark, the
evidence submitted by the opponent in this respect does not alter the outcome
reached above.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein. In the present case, the applicant did not appoint a
professional representative within the meaning of Article 120 EUTMR and therefore
did not incur representation costs.
The Opposition Division
Janja FELC Rasa BARAKAUSKIENE Oana-Alina STURZA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
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.