OPPOSITION No B 2 326 026

Royalton Overseas Ltd, 325 Waterfront Drive, Omar Hodge Building 2nd Floor, Wickhams Cay, Road Town, Tortola, British Virgin Islands  (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

SC Dansk International Srl, Aleea Emanoil Buteica nr. 2, Bl. 68, Sc. 1, Et. 8, Ap. 49, Sector 3, 031822 Bucuresti, Romania (applicant), represented by Elena Oltean, SC Dansk International Srl, Aleea Emanoil Buteica nr. 2, Bl. 68, Sc. 1, Et. 8, Ap. 49, Sector 3, 031822 Bucuresti, Romania (employee representative).

On 06/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 326 026 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.

2.        European Union trade mark application No 12 253 019 is rejected for all the above goods. It may proceed for the remaining goods and services, namely:

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).

Class 35:         Advertising; Business management; Business administration; Office functions.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 253 019. The opposition is based on European 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 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 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 and services are the following:

Class 21: Household or kitchen utensils and containers; 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); Glassware, porcelain and earthenware not included in other classes.

Class 35: Advertising; Business management; Business administration; Office functions.

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 21

The contested household or kitchen containers are identical to the opponent’s containers for household or kitchen use. Likewise, the contested household or kitchen utensils are identical to the opponent’s utensils for household purposes, either because they are identically contained in both lists or because the opponent’s goods include, or are included in the mentioned contested goods.

The contested earthenware not included in other classes is identical to the opponent’s earthenware.  

The contested glassware, porcelain not included in other classes include objects made of glass or ceramic material that are intended mainly for household, kitchen and/or decorative purposes. Some of the opponent’s goods, such as drinking vessels; coffee services; tea services can be manufactured from porcelain and/or glassware. Hence, the aforementioned opponent’s goods overlap with the contested goods and are considered identical to them.

The remaining contested goods Articles for cleaning purposes; Combs and sponges; Brushes (except paint brushes); Brush-making materials; Steelwool; Unworked or semi-worked glass (except glass used in building) are dissimilar to the opponent’s goods in Classes 8 (various hand-operated instruments and tools and cutlery) and 21 (various household utensils, apparatus and containers). These sets of goods belong to different industries and differ in nature, purpose and method of use. The contested goods include: combs that are goods for personal use (toiletries); sponges, brushes and other articles for cleaning and brush-making materials which are used for cleaning or making brushes; unworked or semi-worked glass which consist of raw materials, namely glass, in an unrefined or unfinished state. The mere fact that one product is used for the manufacture of another (e.g. household containers could be made of this material) is not sufficient in itself to conclude that the goods are similar, as their natures, purposes and consumers are quite distinct. Raw materials are intended for use in industry rather than for direct purchase by the final consumer. Furthermore, the opponent’s goods in Classes 8 and 21 are normally manufactured by different undertakings and the abovementioned contested goods do not have the same distribution channels and relevant public as the opponent’s goods. They are neither in competition, nor complementary.  

Contested services in Class 35

In relation to the contested Advertising; Business management; Business administration; Office functions, it is noted that services are by their nature generally dissimilar to goods. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, that is to say movables or real estate. Services, on the other hand, consist in the provision of intangible activities. Although in some cases there is a clear connection between goods and services, usually due to a strong interdependent, complementary relationship, this is not the present case. In particular, the contested services are rendered by companies specialised in the specific field such as business administration and management consultants, marketing specialists, etc. The contested advertising, office functions, business administration and management services are clearly different in nature and purpose from the opponent’s goods in Classes 8 and 21. Furthermore, their producers/providers and origin, method of use, distribution channels and consumers and do not coincide and they are neither complementary nor in competition with one another. Therefore, the contested services are dissimilar to 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 found to be identical are directed at the public at large. The degree of attention is considered to be average.

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). 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 element ‘KAISERHOFF’ has no meaning or semantic connotation(s) in the majority of the relevant territories, for example, in those countries where German language is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on non-German-speaking parts of the public, such as the English- and Romanian-speaking part of the public.  

The earlier mark is a figurative mark and consists of a rectangular frame that incorporates the word ‘KAISERHOFF’, written in relatively standard uppercase letters, with the exception of the first and last letter which are slightly prolonged. 

The contested sign is also figurative and consists of a stylised representation of a chef’s hat in red and white, the letters ‘KH’ and the word ‘KAISERHOFF’, written in relatively standard uppercase red letters.

The verbal element ‘KAISERHOFF’ included in the signs has no meaning in the relevant territories and its inherent distinctiveness is normal in relation to the goods. Likewise, the letters ‘KH’ in the contested sign, which may also be perceived as an abbreviation of the word that follows below them (as this unknown word starts with a ‘K’ and contains an ‘H’), have no specific descriptive or otherwise weak meaning in relation to the relevant goods and their inherent distinctive character is normal. However, the chef hat device in the contested sign will be associated with the concept of cooking. Bearing in mind that the relevant goods are household and kitchen utensils, as well as glassware, porcelain and earthenware that may be related to cooking, this element is weak for the relevant goods.

As regards the earlier sign, it is composed of a distinctive verbal element and less distinctive figurative elements (the frame and slight stylisation of the letters) of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative elements. Similarly, as regards the figurative elements of the contested sign (such as the slight stylisation of the letters and colours), account must be taken 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).

The signs have no elements that could be considered clearly more dominant (visually eye-catching) than other elements. As regards the contested sign, in spite of the smaller size of the word ‘KAISERHOFF’ as compared to the other elements within the mark, it cannot be said that this element is overshadowed by the elements ‘KH’ and/or the chef hat device, as it remains clearly visible and legible.

Visually, the signs coincide in the word ‘KAISERHOFF’, which represents the most distinctive element of the earlier mark and a distinctive verbal element within the contested sign. As mentioned above, the graphical elements in the earlier mark are purely decorative and/or less important. As regards the contested sign, its layout is much more complex than the earlier mark. Although the chef hat device is weak and in spite of the fact that the letters ‘KH’ can be perceived as conceptually subordinate to the element ‘KAISERHOFF’, their visual role can hardly be underestimated in view of their size and positioning. At the same time, in spite of its ‘last-line’ positioning, the verbal element ‘KAISERHOFF’ is also an important trade identifier within the contested sign and has an independent distinctive role therein. Consequently, in view of all these findings, taking into account the distinctive and figurative elements of the signs and their respective weight, it is concluded that the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive verbal element ‘KAISERHOFF’ and differs in the sound of the letters ‘KH’ in the contested sign, which have no counterpart in the earlier sign. Although the differing letters ‘KH’ appear in the beginning of the contested sign, bearing in mind that the coinciding word in the signs is much longer and the only verbal element of the earlier mark, it is considered that the signs are aurally similar to at least an average degree.

The concepts of the signs have been defined above. As mentioned, the contested sign will be associated with the concept of ‘cooking’ because of the chef hat device and the earlier mark will not be associated with any meaning. To that extent, the signs are not conceptually similar. Nevertheless, as the hat device element is weak and not as important as the other verbal elements in the contested sign, this element has a restricted conceptual impact and it is likely that the attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning.

 

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 less distinctive figurative elements as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods and services are partly identical and partly dissimilar to the opponent’s goods. The relevant goods are directed at the public at large and the level of attention is average.

The signs are visually similar to a low degree and aurally similar to at least an average degree. The signs are not conceptually similar but this is due to a weak element the relevance of which is restricted, as explained above.

The similarities between the signs are on account of the common and normally distinctive element ‘KAISERHOFF’, which constitutes the only verbal and distinctive element of the earlier mark and an element with an independent distinctive role within the contested sign. While it is indeed true that the signs differ in certain aspects, especially from a visual point of view, this difference is not of decisive importance. As follows from case law, two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (judgment of 23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30). The coincidence must be, therefore, ‘relevant’ from the perspective of the consumer who usually perceives a mark as a whole and does not proceed to analyse its various details (judgment of 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

In the present case, the coincidence between the signs is in the distinctive element ‘KAISERHOFF’, which is a ‘relevant’ coincidence from the perspective of the consumer – this element is the most distinctive element of the earlier mark and an element with an independent distinctive role within the contested sign.

Bearing in mind that the 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), it is considered that there is a risk of likelihood of confusion/association between the marks in relation to identical goods. This is because the coinciding element in the signs plays an independent distinctive role in both signs. It is conceivable that the relevant consumer will perceive the mark applied for as a sub-brand, 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). Therefore, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of goods designated by the trade mark applied for.

Considering all the above, including the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17), the Opposition Division finds that there is a likelihood of confusion on the part of the English- and Romanian-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European trade mark registration No 9 242 066. 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 found to be identical 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Boyana NAYDENOVA

Liliya YORDANOVA

Gueorgui IVANOV

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.