OPPOSITION No B 2 336 066

 

 

Kik Textilien und Non-Food GmbH, Siemensstr. 21, 59199 Bönen, Germany (opponent), represented by Weber & Sauberschwarz, Königsallee 1, 40212 Düsseldorf, Germany (professional representative)

 

a g a i n s t

 

 

SC Gold Class SRL, Str. Vulturilor 53, Corp B, Ap. 1, Sector 3, 030852 Bucharest, Romania (applicant).

 

On 30/05/2017, the Opposition Division takes the following

 

 

DECISION:

 

 

1.        Opposition No B 2 336 066 is partially upheld, namely for the following contested goods and services:

 

Class 21: Brushes and brush-making articles; Cleaning articles; Cosmetic and toilet utensils and bathroom articles; Gardening articles; Statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class; Tableware, cookware and containers; Basins [bowls]; Basins [receptacles]; Air fragrancing apparatus; Dustbins; Abrasive discs for kitchen [cleaning] purposes; Abrasive pads; Abrasive pads for kitchen purposes; Abrasive sponges for kitchen [cleaning] use; Anti-static cloths for household use; Artificial sponges for household purposes; Bathroom pails; Bottle brushes; Buckets; Buckets for household use; Buckets incorporating castors; Buckets incorporating mop wringers; Carpet beaters [hand instruments]; Carpet shampoo applicators (Non-electric -); Carpet sweepers; Carpet sweepers (Non-electric -); Cinder sifters for household purposes; Cleaning instruments, hand-operated; Cleaning mitts of fabric; Cloth for washing floors; Cloths for cleaning made from cellulose; Cleaning tow; Cloths for wiping optical lenses; Cloths for wiping tableware; Cotton waste for cleaning; Crumb collecting instruments [non-electric]; Crumb trays; Dishwashing brushes; Dispensers for detergents; Dust-pans; Dusting apparatus, non-electric; Dusting brushes; Dusting cloths [rags]; Dusting gloves; Eyeglass cleaning cloths; Fabrics (Buckets made of woven -); Feeding bottle brushes; Floor cloths; Furniture dusters; Glass cleaning implements; Glossing cloths [not abrasive]; Gloves for household purposes; Household gloves for cleaning purposes; Kitchen sponges; Leathers for cleaning purposes; Lint rollers; Lint rollers [adhesive] for removing lint from clothing; Lintless cleaning cloths; Litter trays; Materials [cloths] for polishing; Metal scouring pads; Metallic wool for cleaning purposes; Metallic wool for scouring purposes; Mop heads; Mop pails; Mop pails incorporating mop wringers; Mop wringers; Mops; Nebulizers for household use; Non-electric floor polishers; Pads for cleaning; Pads of metal for cleaning; Plastic bowls [basins]; Plastic buckets; Plungers for clearing blocked drains; Polishing apparatus and machines, for household purposes, non-electric; Polishing gloves; Polishing leather; Polishing materials for making shiny, except preparations, paper and stone; Rinsing pails; Rinsing tubs; Rubber gloves for household use; Scourers for saucepans; Scouring cloths; Scouring sponges; Scrapers for household purposes; Skins of chamois for cleaning; Smoke absorbers for household purposes; Sponges for household purposes; Squeegees [for household use]; Squeegees [hand-operated] for cleaning; Squeegees for dishes; Steel wool for cleaning; Toilet sponges; Steelwool; Washing boards; Washtubs; Wax-polishing (Apparatus for -), non-electric; Window dusters; Wiping cloths; Wool waste for cleaning; Bowls for plants; Containers for flowers; Covers, not of paper, for flower pots; Flower baskets; Flower bowls; Flower pot holders; Flower pots; Flower vases; Flower vases of precious metal; Garden hose sprayers; Gardening gloves; Glass vases; Holders for flowers and plants [flower arranging]; Jardinieres of earthenware; Jardinieres of glass; Nozzles for hosepipes; Nozzles for watering hose; Plant baskets; Planters of clay; Planters of earthenware; Planters of glass; Planters of plastic; Plastic lids for plant pots; Plastic spray nozzles; Porcelain flower pots; Pot plant support sticks; Repotting containers for plants; Saucers for flower pots; Seed tray inserts; Seed trays; Sprayer nozzles for garden hoses; Sprayer wands for garden hoses; Sprayers attached to garden hoses; Sprinklers; Sprinklers for watering flowers and plants; Sprinkling devices; Terrariums (Indoor -) [plant cultivation]; Terrariums (Indoor -) [vivariums]; Vases; Water syringes for spraying plants; Watering can sprinklers; Watering cans; Window-boxes; Busts made of glass; Busts made of terra cotta; Busts of china, terra-cotta or glass; Ceramic coin boxes; China ornaments; Collector plates; Commemorative plates; Decorative boxes of glass; Decorative sand bottles; Figurines made of lead crystal; Figurines made of terra cotta; Garden gnomes of earthenware; Garden gnomes of glass; Garden gnomes of porcelain; Majolica; Model figures [ornaments] made of glass; Model vehicles [ornaments] made of glass; Model vehicles [ornaments] made of porcelain; Model vehicles [ornaments] made of terra-cotta; Ornamental models made of porcelain; Ornamental sculptures made of porcelain; Piggy banks; Piggy banks of china; Plaques of glass; Plaques of porcelain; Plaques of pottery; Porcelain articles for decorative purposes; Porcelain eggs; Sculptures made from glass; Signboards of porcelain or glass; Souvenir plates; Stained glass figurines; Statues of porcelain, ceramic, earthenware or glass; Works of art made of crystal; Works of art made of earthenware; Works of art made of glass; Works of art made of porcelain; Works of art, of porcelain, terra-cotta or glass; Glasses, drinking vessels and barware; Abrasive instruments for kitchen [cleaning] purposes; Aerosol dispensers, not for medical purposes; Beer mugs; Beverage glassware; Beverage stirrers; Bottle baskets coated with precious metal; Bottle buckets; Bottle coolers; Bottle cradles; Bottle openers [hand-operated]; Bottle openers incorporating knives; Bottle openers, electric and non-electric; Brandy snifters; Champagne buckets; Champagne flutes; Charms for attachment to beverage glassware for identification purposes; Cocktail stirrers; Coolers for wine; Cooling buckets for wine; Cordial glasses; Corkscrews with knives; Corkscrews, electric and non-electric; Cup holders; Cups made of plastics; Cups, not of precious metal; Decanters; Drinking bottles for sports; Drinking glass holders; Drinking goblets; Drinking vessels; Drip preventers for bottles; Fitted liners for ice buckets; Glass decanters; Glass holders; Glasses [drinking vessels]; Glassware not included in other classes; Goblets; Holders for tumblers; Ice buckets; Horns (Drinking -); Liqueur sets; Liqueur flasks; Mugs made of ceramic materials; Mugs made of fine bone china; Mugs made of plastic; Non-electric bottle openers; Pewter goblets; Pewter tankards; Pint glasses; Pint tankards; Pipettes [wine-tasters]; Pitchers; Schnapps glasses; Shakers; Siphon bottles for carbonated water; Straws for drinking; Tankards; Toby jugs; Tumblers; Whisky glasses; Wine bottle cradles; Wine buckets; Wine decanters; Wine glasses; Wine jugs; Wine strainers; Aluminium bakeware; Aluminium cookware; Aluminium moulds [kitchen utensils]; Apothecary jars; Autoclaves (Non-electric -) for household use; Automobile oil funnels; Bakers’ tinware; Bakeware [not toys]; Bakeware; Baking containers made of glass; Baking dishes made of earthenware; Baking dishes made of porcelain; Baking mats; Baking sheets of common metal; Baking tins; Baking trays made of aluminium; Baking utensils; Baskets for domestic use; Baskets of common metal for household use; Basting spoons; Basting spoons, for kitchen use; Beaters, non-electric; Beaters (Non-electric -) for kitchen use; Beverage coolers [containers]; Blenders for food [non-electric]; Blenders, non-electric, for household purposes; Bone china tableware [other than cutlery]; Bottle coolers [receptacles]; Bottle stands; Bottles; Bowls for candy; Bowls for nuts; Bowls of precious metal; Boxes for dispensing paper serviettes; Boxes for sweetmeats; Boxes of earthenware; Boxes of glass; Boxes of porcelain; Bread baskets, domestic; Bread bins; Bread boards; Brushes for basting meat; Butlers’ trays; Butter coolers; Butter curlers; Butter-dish covers; Butter dishes; Butter pans; Cabarets [trays]; Cake brushes; Cake domes; Cake moulds; Cake moulds of common metal; Cake moulds of non-metallic materials; Cake rings; Cake servers; Cake stands; Cake stands of non-metallic materials; Cake tins; Cake trays; Camping grills; Candle extinguishers; Candle extinguishers of precious metal; Candle holders of wrought iron; Candle rings; Candlesticks; Canister sets; Carver rests; Carving boards; Casseroles [dishes]; Cast stone containers for household; Cauldrons; Caviar coolers; Ceramic hollowware; Ceramic tableware; Ceramics for household purposes; Ceramics for kitchen use; Cheese boards; Cheese-dish covers; Chip pan baskets; Chocolate molds; Chopstick cases; Chopsticks; Closures for pot lids; Coasters (tableware); Coasters, not of paper and other than table linen; Cocktail sticks; Coffee filters, nonelectric; Coffee grinders; Coffee grinders, hand-operated; Coffee percolators, nonelectric; Coffee mugs; Coffee pots; Coffee services [tableware]; Coffee services of ceramic; Coffee services of china; Coffee stirrers; Coffeepots, non-electric; Combined lids for kitchen containers; Confectioners’ decorating bags [pastry bags]; Confectioners’ molds; Cookery molds [moulds]; Containers for household or kitchen use; Cookie [biscuit] cutters; Cookie jars; Cooking funnels; Cooking pots; Cooking skewers; Cooking skewers, not of metal; Cooking strainers; Cooking utensils for use with domestic barbecues; Cooking utensils, non-electric; Coolers [non-electric containers]; Corn cob holders; Coupes; Covers for dishes; Cream jugs; Cruets; Crystal [glassware]; Cups; Cups and mugs; Cups made of pottery; Cups of paper or plastic; Cutlery trays; Cutting boards for the kitchen; Decorative china; Deep fryers, non-electric; Demijohns; Dish drying racks; Dishes [household utensils]; Dishes for microwave ovens; Dishware; Dispensers for cling film [other than fixed]; Dispensers for liquid soap [for household purposes]; Dispensers for serviettes; Disposable lids for household containers; Disposable table plates; Double boilers; Double heat insulated containers for food; Draining trays; Drinks containers; Drip mats for tea; Dripping pans; Dutch ovens; Earthenware; Earthenware basins; Earthenware not included in other classes; Egg cups; Egg poachers; Egg separators; Empty spray bottles; Enamel boxes; Enamelled jars; Epergnes; Feeding cups; Finger bowls; Fireproof dishes; Fitted picnic baskets; Flasks; Flour sifters; Foam drink holders; Foil food containers; Food cooling devices, containing heat exchange fluids, for household purposes; Food preserving jars of glass; Food storage containers; Fruit bowls of glass; Fruit cups; Fruit presses, nonelectric, for household purposes; Funnels; Garlic cellars; Garlic presses (Handoperated -); Glass bowls; Glass cups; Glass flasks; Glass flasks [containers]; Glass holders for candles; Glass jars; Glass mugs; Glass pans; Glass plates; Glass pots; Glass stoppers; Glass storage jars; Glass tableware; Glass vials [receptacles]; Glasses [receptacles]; Glassware for household purposes; Glue-pots; Graters [nonelectric household utensils]; Graters for kitchen use; Gratin dishes; Gravy boats; Griddles [cooking utensils]; Griddles [non-electric cooking utensils]; Gridiron supports; Grinders (Non-electric -); Hand cut crystal glassware; Hand-operated food grinders; Hand-operated food processor; Heat insulated domestic vessels of earthenware; Heat insulated domestic vessels of porcelain; Heat insulated domestic vessels of glass; Heat-insulated containers; Heat-insulated containers for beverages; Heaters for feeding bottles, non-electric; Honey servers; Hot pots, not electrically heated; Household containers; Household or kitchen utensils; Household utensils; Ice cream scoops; Ice cube molds [moulds]; Insulated food cover domes; Insulating flasks; Insulating jars; Insulating sleeve holder for beverage cups; Insulating sleeve holders for beverage cans; Isothermic bags; Jam pots; Japanese rice bowls (chawan); Jars; Jars (Glass -) [carboys]; Jars for household use; Juice squeezers; Kettles, non-electric; Kitchen containers; Kitchen grinders, non-electric; Kitchen urns [not of precious metal]; Kitchen utensils; Knife blocks; Knife rests; Knife rests for the table; Laundry baskets; Lazy susans; Lemon squeezers; Litter baskets of metal; Lunch boxes; Lunch boxes made of metal; Lunch boxes made of plastic; Meal trays; Meat tenderisers for household purposes; Melon ballers; Menorahs; Menu card holders; Mess-tins; Mess-tins [rice cooking canteens]; Metal pans; Milk churns; Milk pans; Mills for domestic purposes, hand-operated; Mixing cups; Mixing spoons [kitchen utensils]; Moulds [kitchen utensils]; Muffin tins; Mug racks; Mug trees; Mugs; Mugs made of earthenware; Mugs made of porcelain; Mushroom brushes; Mustard pots; Napkin dispensers for household use; Napkin holders; Napkin holders of precious metal; Napkin rings of precious metal; Non-electric canners [pressure cookers]; Non-electric food mixers; Non-electric griddles; Non-electric meat grinders; Non-electric plunger style coffee makers; Non-electrical coffee grinders; Noodle machines, hand-operated; Oven gloves; Oven heat resistant pads; Oven to table racks; Oven-to-table tableware; Painted glassware; Pancake frying pans; Pans; Paper cups; Paper plates; Pastry boards; Pastry brushes; Pastry cutters; Pedal bins; Pepper grinders; Pepper mills, hand-operated; Pepper pots; Pepper pots [not of precious metal]; Picnic baskets (Fitted -), including dishes; Picnic boxes; Picnic crockery; Pie pans; Pie tins; Pins of metal (Cooking -); Pizza peels; Pizza stones; Place card holders; Plastic bins [dustbins]; Plastic bottles; Plastic bowls [household containers]; Plastic coasters; Plastic funnels; Plastic egg holders for domestic use; Plastic ice cube moulds; Plastic juice box holders; Plastic plates; Plastic plates [dishes]; Plastic water bottles [empty]; Plates to prevent milk boiling over; Pomanders [containers]; Porcelain coasters; Porcelain not included in other classes; Porcelain ware; Portable beverage coolers; Portable beverage dispensers; Portable coolers; Pot lids; Pots; Pot stands; Pottery; Pouring spouts for household use; Pouring spouts for kitchen use; Preserve glasses; Presses (Garlic -) [kitchen utensils]; Pressure cookers; Pudding moulds; Reamers for fruit juice; Refrigerating bottles; Relish dishes; Reusable plastic water bottles sold empty; Reusable stainless steel water bottles sold empty; Rice cooking pots [non-electric]; Roasting dishes; Rolling pins, domestic; Rotary cheese graters; Sacred vessels; Salad bowls; Salad drainers (Hand-operated -); Salad spinners; Salt mills; Salt shakers; Salt shakers [not of precious metal]; Sandwich boxes; Saucepans; Saucepans (Earthenware -); Saucer lights with snuffers; Saucers; Scoops [tableware]; Scrapers (kitchen implements); Services [dishes]; Serving bowls; Serving platters; Serving pots; Shakers for spices; Shallow bowls; Shallow pans for cooking; Sifters [household utensils]; Siphons for cream; Skewers (cooking utensil); Skewers for use in cooking; Skewers of wood; Skillets (Non-electric -); Skimmers [non-electric kitchen implements]; Slow cookers (Non-electric -); Small jugs; Soufflé dishes; Soup bowls; Spaghetti measurers; Spaghetti servers; Spaghetti tongs; Spatulas; Spatulas [kitchen utensils]; Spice grinders (Non-electric -); Spice jars; Spice sets; Spits [other than parts of cooking apparatus]; Spoon rests; Sports bottles sold empty; Spouts; Squeeze bottle [empty]; Stands for dishes; Steamer baskets; Steamers [cookware]; Stoppers for bottles; Storage jars; Strainers; Strainers for household purposes; Straw dispensers; Sugar bowls; Sugar bowls [not of precious metal]; Syrup jugs; Table plates; Tableware, other than knives, forks and spoons; Tart scoops; Tea cups; Tea infusers; Tea services [tableware]; Tea caddies; Tea cosies; Tea strainers; Teapot stands; Teapots; Tenderizers [kitchen utensils]; Thermally insulated flasks for household use; Thermally insulated containers for food; Toothpick holders; Trays for domestic purposes; Trays for domestic purposes, of paper; Trivets [table utensils]; Utensil jars; Vacuum flasks for holding drinks; Vacuum flasks for holding food; Urns; Vacuum jars; Vacuum jugs (Non-electric -); Vegetable dishes; Vegetable mashers; Vegetable racks; Vessels of metal for making ices and iced drinks; Vinegar cruets; Waffle irons, non-electric; Water bottles; Whisks; Whisks, non-electric, for household purposes; Whistling kettles; Wire baskets [cooking utensils]; Woks; Glass wool other than for insulation.

 

Class 35: Retail services connected with the sale of clothing and clothing accessories; retail store services in the field of clothing; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; retail services connected with stationery; department store retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment; mail order retail services connected with clothing accessories; retail services connected with the sale of furniture; retail services relating to food; shop retail services connected with carpets; stationery shop retail services connected with the sale of stationery, printed matter, computer equipment and peripherals and home entertainment products.

 

2.        European Union trade mark application No 12 493 177 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 12 493 177, namely against all the goods in Class 21 and some of the services in Class 35. The opposition is based on, inter alia, international registration No 893 026 designating inter alia Spain. The opponent invoked Article 8(1)(b) EUTMR.

 

On 28/09/2015, the Opposition Division rendered a decision partially upholding the opposition based on the opponent’s German trade mark registration No 30 321 863, not assessing the other earlier mark invoked, namely International registration No 893 026 designating Austria, Benelux, Bulgaria, Czech Republic, Spain, France, Croatia, Hungary, Italy, Poland and the Slovak Republic, for the same word mark ‘kik’ and covering the same services in Class 35 as the German trade mark registration No 30 321 863.

 

The decision was appealed and the Board of Appeal decided in case R 2366/2015-5 on 09/01/2017. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that a substantial procedural error was made by not examining the other earlier mark invoked by the opponent, namely International registration No 893 026 designating Austria, Benelux, Bulgaria, Czech Republic, Spain, France, Croatia, Hungary, Italy, Poland and the Slovak Republic. The Opposition Division did not undertake an assessment of the proof of use in relation to this international registration and did not take into account that with respect to some countries (Spain, France, Italy, Croatia and Bulgaria) this mark was not subject to proof of use as the mark had been registered for less than five years in those countries. Therefore, the likelihood of confusion on the basis of that earlier mark should have been assessed on the basis of the full list of services for which it was registered in those territories.

 

Consequently, the Opposition Division erred in not assessing the proof of use submitted with regard to International registration No 893 026 and did not correctly consider all of the earlier services nor the linguistic diversity required  in order to fully assess a likelihood of confusion under 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.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s International registration No 893 026 designating Spain (subsequent designation of 06/07/2012), which is not subject to proof of use as this earlier trade mark was not registered for more than five years prior to the date of publication of the contested trade mark (13/02/2014).

 

 

1. The goods and services

 

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

 

Class 35: Retail sale services in connection with textiles, cosmetic products, toys, household products and other products for everyday use.

 

The contested goods and services are the following:

 

Class 21: Brushes and brush-making articles; Cleaning articles; Cosmetic and toilet utensils and bathroom articles; Gardening articles; Statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class; Tableware, cookware and containers; Unworked and semi-worked glass, not specified for use; Basins [bowls]; Basins [receptacles]; Air fragrancing apparatus; Dustbins; Abrasive discs for kitchen [cleaning] purposes; Abrasive pads; Abrasive pads for kitchen purposes; Abrasive sponges for kitchen [cleaning] use; Anti-static cloths for household use; Artificial sponges for household purposes; Bathroom pails; Billiard table brushes; Bottle brushes; Buckets; Buckets for industrial use; Buckets for household use; Buckets incorporating castors; Buckets incorporating mop wringers; Carpet beaters [hand instruments]; Carpet shampoo applicators (Non-electric -); Carpet sweepers; Carpet sweepers (Non-electric -); Cinder sifters for household purposes; Cleaning instruments, hand-operated; Cleaning mitts of fabric; Cloth for washing floors; Cloths for cleaning made from cellulose; Cleaning tow; Cloths for wiping optical lenses; Cloths for wiping tableware; Cotton waste for cleaning; Crumb collecting instruments [non-electric]; Crumb trays; Dishwashing brushes; Dispensers for detergents; Dust-pans; Dusting apparatus, non-electric; Dusting brushes; Dusting cloths [rags]; Dusting gloves; Eyeglass cleaning cloths; Fabrics (Buckets made of woven -); Feeding bottle brushes; Floor cloths; Furniture dusters; Glass cleaning implements; Glossing cloths [not abrasive]; Gloves for household purposes; Household gloves for cleaning purposes; Kitchen sponges; Leathers for cleaning purposes; Lint rollers; Lint rollers [adhesive] for removing lint from clothing; Lintless cleaning cloths; Litter trays; Materials [cloths] for polishing; Metal scouring pads; Metallic wool for cleaning purposes; Metallic wool for scouring purposes; Mop heads; Mop pails; Mop pails incorporating mop wringers; Mop wringers; Mops; Nebulizers for household use; Non-electric floor polishers; Pads for cleaning; Pads of metal for cleaning; Plastic bowls [basins]; Plastic buckets; Plungers for clearing blocked drains; Polishing apparatus and machines, for household purposes, non-electric; Polishing gloves; Polishing leather; Polishing materials for making shiny, except preparations, paper and stone; Rinsing pails; Rinsing tubs; Rubber gloves for household use; Scourers for saucepans; Scouring cloths; Scouring sponges; Scrapers for household purposes; Skins of chamois for cleaning; Smoke absorbers for household purposes; Sponges for household purposes; Squeegees [for household use]; Squeegees [hand-operated] for cleaning; Squeegees for dishes; Steel wool for cleaning; Toilet sponges; Steelwool; Washing boards; Washtubs; Wax-polishing (Apparatus for -), non-electric; Window dusters; Wiping cloths; Wool waste for cleaning; Bowls for plants; Containers for flowers; Covers, not of paper, for flower pots; Flower baskets; Flower bowls; Flower pot holders; Flower pots; Flower vases; Flower vases of precious metal; Garden hose sprayers; Gardening gloves; Glass vases; Holders for flowers and plants [flower arranging]; Jardinieres of earthenware; Jardinieres of glass; Nozzles for hosepipes; Nozzles for watering hose; Plant baskets; Planters of clay; Planters of earthenware; Planters of glass; Planters of plastic; Plastic lids for plant pots; Plastic spray nozzles; Porcelain flower pots; Pot plant support sticks; Repotting containers for plants; Saucers for flower pots; Seed tray inserts; Seed trays; Sprayer nozzles for garden hoses; Sprayer wands for garden hoses; Sprayers attached to garden hoses; Sprinklers; Sprinklers for watering flowers and plants; Sprinkling devices; Terrariums (Indoor -) [plant cultivation]; Terrariums (Indoor -) [vivariums]; Vases; Water syringes for spraying plants; Watering can sprinklers; Watering cans; Window-boxes; Busts made of glass; Busts made of terra cotta; Busts of china, terra-cotta or glass; Ceramic coin boxes; China ornaments; Collector plates; Commemorative plates; Decorative boxes of glass; Decorative sand bottles; Figurines made of lead crystal; Figurines made of terra cotta; Garden gnomes of earthenware; Garden gnomes of glass; Garden gnomes of porcelain; Majolica; Model figures [ornaments] made of glass; Model vehicles [ornaments] made of glass; Model vehicles [ornaments] made of porcelain; Model vehicles [ornaments] made of terra-cotta; Ornamental models made of porcelain; Ornamental sculptures made of porcelain; Piggy banks; Piggy banks of china; Plaques of glass; Plaques of porcelain; Plaques of pottery; Porcelain articles for decorative purposes; Porcelain eggs; Sculptures made from glass; Signboards of porcelain or glass; Souvenir plates; Stained glass figurines; Statues of porcelain, ceramic, earthenware or glass; Works of art made of crystal; Works of art made of earthenware; Works of art made of glass; Works of art made of porcelain; Works of art, of porcelain, terra-cotta or glass; Glasses, drinking vessels and barware; Abrasive instruments for kitchen [cleaning] purposes; Aerosol dispensers, not for medical purposes; Beer mugs; Beverage glassware; Beverage stirrers; Bottle baskets coated with precious metal; Bottle buckets; Bottle coolers; Bottle cradles; Bottle openers [hand-operated]; Bottle openers incorporating knives; Bottle openers, electric and non-electric; Brandy snifters; Champagne buckets; Champagne flutes; Charms for attachment to beverage glassware for identification purposes; Cocktail stirrers; Coolers for wine; Cooling buckets for wine; Cordial glasses; Corkscrews with knives; Corkscrews, electric and non-electric; Cup holders; Cups made of plastics; Cups, not of precious metal; Decanters; Drinking bottles for sports; Drinking glass holders; Drinking goblets; Drinking vessels; Drip preventers for bottles; Fitted liners for ice buckets; Glass decanters; Glass holders; Glasses [drinking vessels]; Glassware not included in other classes; Goblets; Holders for tumblers; Ice buckets; Horns (Drinking -); Liqueur sets; Liqueur flasks; Mugs made of ceramic materials; Mugs made of fine bone china; Mugs made of plastic; Non-electric bottle openers; Pewter goblets; Pewter tankards; Pint glasses; Pint tankards; Pipettes [wine-tasters]; Pitchers; Schnapps glasses; Shakers; Siphon bottles for carbonated water; Straws for drinking; Tankards; Toby jugs; Tumblers; Whisky glasses; Wine bottle cradles; Wine buckets; Wine decanters; Wine glasses; Wine jugs; Wine strainers; Aluminium bakeware; Aluminium cookware; Aluminium moulds [kitchen utensils]; Apothecary jars; Autoclaves (Non-electric -) for household use; Automobile oil funnels; Bakers’ tinware; Bakeware [not toys]; Bakeware; Baking containers made of glass; Baking dishes made of earthenware; Baking dishes made of porcelain; Baking mats; Baking sheets of common metal; Baking tins; Baking trays made of aluminium; Baking utensils; Baskets for domestic use; Baskets of common metal for household use; Basting spoons; Basting spoons, for kitchen use; Beaters, non-electric; Beaters (Non-electric -) for kitchen use; Beverage coolers [containers]; Blenders for food [non-electric]; Blenders, non-electric, for household purposes; Bone china tableware [other than cutlery]; Bottle coolers [receptacles]; Bottle stands; Bottles; Bottles for pharmaceuticals sold empty; Bowls for candy; Bowls for nuts; Bowls of precious metal; Boxes for dispensing paper serviettes; Boxes for sweetmeats; Boxes of earthenware; Boxes of glass; Boxes of porcelain; Bread baskets, domestic; Bread bins; Bread boards; Brushes for basting meat; Butlers’ trays; Butter coolers; Butter curlers; Butter-dish covers; Butter dishes; Butter pans; Cabarets [trays]; Cake brushes; Cake domes; Cake moulds; Cake moulds of common metal; Cake moulds of non-metallic materials; Cake rings; Cake servers; Cake stands; Cake stands of non-metallic materials; Cake tins; Cake trays; Camping grills; Candle extinguishers; Candle extinguishers of precious metal; Candle holders of wrought iron; Candle rings; Candlesticks; Canister sets; Carver rests; Carving boards; Casseroles [dishes]; Cast stone containers for household; Cauldrons; Caviar coolers; Ceramic hollowware; Ceramic tableware; Ceramics for household purposes; Ceramics for kitchen use; Cheese boards; Cheese-dish covers; Chip pan baskets; Chocolate molds; Chopstick cases; Chopsticks; Closures for pot lids; Coasters (tableware); Coasters, not of paper and other than table linen; Cocktail sticks; Coffee filters, nonelectric; Coffee grinders; Coffee grinders, hand-operated; Coffee percolators, nonelectric; Coffee mugs; Coffee pots; Coffee services [tableware]; Coffee services of ceramic; Coffee services of china; Coffee stirrers; Coffeepots, non-electric; Combined lids for kitchen containers; Confectioners’ decorating bags [pastry bags]; Confectioners’ molds; Containers (Non-metallic -) for holy water; Cookery molds [moulds]; Containers for household or kitchen use; Cookie [biscuit] cutters; Cookie jars; Cooking funnels; Cooking pots; Cooking skewers; Cooking skewers, not of metal; Cooking strainers; Cooking utensils for use with domestic barbecues; Cooking utensils, non-electric; Coolers [non-electric containers]; Corn cob holders; Coupes; Covers for dishes; Cream jugs; Cruets; Crystal [glassware]; Cups; Cups and mugs; Cups made of pottery; Cups of paper or plastic; Cutlery trays; Cutting boards for the kitchen; Decorative china; Deep fryers, non-electric; Demijohns; Dish drying racks; Dishes [household utensils]; Dishes for microwave ovens; Dishware; Dispensers for cling film [other than fixed]; Dispensers for liquid soap [for household purposes]; Dispensers for serviettes; Disposable lids for household containers; Disposable table plates; Double boilers; Double heat insulated containers for food; Draining trays; Drinks containers; Drip mats for tea; Dripping pans; Dutch ovens; Earthenware; Earthenware basins; Earthenware not included in other classes; Egg cups; Egg poachers; Egg separators; Empty spray bottles; Enamel boxes; Enamelled jars; Epergnes; Feeding cups; Finger bowls; Fireproof dishes; Fitted picnic baskets; Flasks; Flour sifters; Foam drink holders; Foil food containers; Food cooling devices, containing heat exchange fluids, for household purposes; Food preserving jars of glass; Food storage containers; Fruit bowls of glass; Fruit cups; Fruit presses, nonelectric, for household purposes; Funnels; Garlic cellars; Garlic presses (Handoperated -); Glass bowls; Glass cups; Glass flasks; Glass flasks [containers]; Glass holders for candles; Glass jars; Glass mugs; Glass pans; Glass plates; Glass pots; Glass stoppers; Glass storage jars; Glass tableware; Glass vials [receptacles]; Glasses [receptacles]; Glassware for household purposes; Glue-pots; Graters [nonelectric household utensils]; Graters for kitchen use; Gratin dishes; Gravy boats; Griddles [cooking utensils]; Griddles [non-electric cooking utensils]; Gridiron supports; Grinders (Non-electric -); Hand cut crystal glassware; Hand-operated food grinders; Hand-operated food processor; Heat insulated domestic vessels of earthenware; Heat insulated domestic vessels of porcelain; Heat insulated domestic vessels of glass; Heat-insulated containers; Heat-insulated containers for beverages; Heaters for feeding bottles, non-electric; Honey servers; Hot pots, not electrically heated; Household containers; Household or kitchen utensils; Household utensils; Ice cream scoops; Ice cube molds [moulds]; Insulated food cover domes; Insulating flasks; Insulating jars; Insulating sleeve holder for beverage cups; Insulating sleeve holders for beverage cans; Isothermic bags; Jam pots; Japanese rice bowls (chawan); Jars; Jars (Glass -) [carboys]; Jars for household use; Juice squeezers; Kettles, non-electric; Kitchen containers; Kitchen grinders, non-electric; Kitchen urns [not of precious metal]; Kitchen utensils; Knife blocks; Knife rests; Knife rests for the table; Laundry baskets; Lazy susans; Lemon squeezers; Litter baskets of metal; Lunch boxes; Lunch boxes made of metal; Lunch boxes made of plastic; Meal trays; Meat tenderisers for household purposes; Melon ballers; Menorahs; Menu card holders; Mess-tins; Mess-tins [rice cooking canteens]; Metal pans; Milk churns; Milk pans; Mills for domestic purposes, hand-operated; Mixing cups; Mixing spoons [kitchen utensils]; Moulds [kitchen utensils]; Muffin tins; Mug racks; Mug trees; Mugs; Mugs made of earthenware; Mugs made of porcelain; Mushroom brushes; Mustard pots; Napkin dispensers for household use; Napkin holders; Napkin holders of precious metal; Napkin rings of precious metal; Non-electric canners [pressure cookers]; Non-electric food mixers; Non-electric griddles; Non-electric meat grinders; Non-electric plunger style coffee makers; Non-electrical coffee grinders; Noodle machines, hand-operated; Oven gloves; Oven heat resistant pads; Oven to table racks; Oven-to-table tableware; Painted glassware; Pancake frying pans; Pans; Paper cups; Paper plates; Pastry boards; Pastry brushes; Pastry cutters; Pedal bins; Pepper grinders; Pepper mills, hand-operated; Pepper pots; Pepper pots [not of precious metal]; Picnic baskets (Fitted -), including dishes; Picnic boxes; Picnic crockery; Pie pans; Pie tins; Pins of metal (Cooking -); Pizza peels; Pizza stones; Place card holders; Plastic bins [dustbins]; Plastic bottles; Plastic bowls [household containers]; Plastic coasters; Plastic funnels; Plastic egg holders for domestic use; Plastic ice cube moulds; Plastic juice box holders; Plastic plates; Plastic plates [dishes]; Plastic water bottles [empty]; Plates to prevent milk boiling over; Pomanders [containers]; Porcelain coasters; Porcelain not included in other classes; Porcelain ware; Portable beverage coolers; Portable beverage dispensers; Portable coolers; Pot lids; Pots; Pot stands; Pottery; Pouring spouts for household use; Pouring spouts for kitchen use; Preserve glasses; Presses (Garlic -) [kitchen utensils]; Pressure cookers; Pudding moulds; Reamers for fruit juice; Refrigerating bottles; Relish dishes; Reusable plastic water bottles sold empty; Reusable stainless steel water bottles sold empty; Rice cooking pots [non-electric]; Roasting dishes; Rolling pins, domestic; Rotary cheese graters; Sacred vessels; Salad bowls; Salad drainers (Hand-operated -); Salad spinners; Salt mills; Salt shakers; Salt shakers [not of precious metal]; Sandwich boxes; Saucepans; Saucepans (Earthenware -); Saucer lights with snuffers; Saucers; Scoops [tableware]; Scrapers (kitchen implements); Services [dishes]; Serving bowls; Serving platters; Serving pots; Shakers for spices; Shallow bowls; Shallow pans for cooking; Sifters [household utensils]; Siphons for cream; Skewers (cooking utensil); Skewers for use in cooking; Skewers of wood; Skillets (Non-electric -); Skimmers [non-electric kitchen implements]; Slow cookers (Non-electric -); Small jugs; Soufflé dishes; Soup bowls; Spaghetti measurers; Spaghetti servers; Spaghetti tongs; Spatulas; Spatulas [kitchen utensils]; Spice grinders (Non-electric -); Spice jars; Spice sets; Spits [other than parts of cooking apparatus]; Spoon rests; Sports bottles sold empty; Spouts; Squeeze bottle [empty]; Stands for dishes; Steamer baskets; Steamers [cookware]; Stoppers for bottles; Storage jars; Strainers; Strainers for household purposes; Straw dispensers; Sugar bowls; Sugar bowls [not of precious metal]; Syrup jugs; Table plates; Tableware, other than knives, forks and spoons; Tart scoops; Tea cups; Tea infusers; Tea services [tableware]; Tea caddies; Tea cosies; Tea strainers; Teapot stands; Teapots; Tenderizers [kitchen utensils]; Thermally insulated flasks for household use; Thermally insulated containers for food; Toothpick holders; Trays for domestic purposes; Trays for domestic purposes, of paper; Trivets [table utensils]; Utensil jars; Vacuum flasks for holding drinks; Vacuum flasks for holding food; Urns; Vacuum jars; Vacuum jugs (Non-electric -); Vegetable dishes; Vegetable mashers; Vegetable racks; Vessels of metal for making ices and iced drinks; Vinegar cruets; Waffle irons, non-electric; Water bottles; Whisks; Whisks, non-electric, for household purposes; Whistling kettles; Wire baskets [cooking utensils]; Woks; Colored sheet glass [not for building]; Coloured glass (Semi-worked -); Common sheet glass [not for building]; Decorative glass [not for building]; Enamelled glass; Fabricated safety glass for installation into vehicles; Fiberglass other than for insulation or textile use; Fiberglass thread, not for textile use; Float glass [semi-worked]; Fused quartz; Glass (Semiworked -) adapted to absorb heat; Glass (Semi-worked -) adapted to absorb ultraviolet radiation; Glass (Semi-worked -) for vehicles; Glass for vehicle windows [semifinished product]; Glass incorporating electrical conductors; Glass incorporating fine electrical conductors; Glass panels [semi-finished article]; Glass powder; Glass rods; Glass sheets; Glass wool other than for insulation; Heat protective glass (Semiworked -); Heat reflecting glass [semi-worked]; Laminated flat glass [not for building]; Laminated glass [other than for building]; Luminous glass [not for building]; Modified sheet glass [not for building]; Mosaics of glass, not for building; Opaline glass; Open pored sintered glass; Plate glass [raw material]; Plate glass being unworked; Plate glass for cars; Polished plate glass; Porous glass; Powdered glass for decoration; Pressed glass; Profiled glass [semi-finished]; Security glass for making into vehicle windows; Semi-worked glass; Semi-worked glass [except glass used in building]; Sheets of glass, other than for building; Silica (Fused -) [semi-worked product], other than for building; Smoothed plate glass; Spun glass; Stamped glass; Tempered glass [not for building]; Unworked glass; Unworked glass [except glass used in building]; Unworked or semi-worked glass (except glass used in building); Vitreous silica fibers [fibres], not for textile use; Window glass for vehicles.

 

Class 35: Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Retail services connected with stationery; Retail services connected with the sale of clothing and clothing accessories; Department store retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment; Mail order retail services connected with clothing accessories; Retail services connected with the sale of furniture; Retail services relating to food; Retail store services in the field of clothing; Shop retail services connected with carpets; Stationery shop retail services connected with the sale of stationery, printed matter, computer equipment and peripherals and home entertainment products; Administrative processing of purchase orders; Administrative processing of purchase orders within the framework of services provided by mail-order companies; Administrative processing and organising of mail order services; Advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet; Advisory services relating to the ordering of stationery; Advisory services relating to the purchase of goods on behalf of business; Advisory services relating to the purchase of goods on behalf of others.

 

As a preliminary remark, it is to be noted that according to Rule 2(4) EUTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 21

 

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

 

Therefore, the contested cosmetic and toilet utensils and bathroom articles are similar to a low degree to the opponent’s retail sale services in connection with cosmetic products, household products and other products for everyday use in Class 35.

 

The contested eyeglass cleaning cloths are similar to a low degree to the opponent’s retail sale services in connection with textiles in Class 35 as the term textiles refers to a broad range of goods made of textile, including eyeglass cleaning cloths.

 

Furthermore, the contested brushes cleaning articles; gardening articles; statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class; tableware, cookware and containers; basins [bowls]; basins [receptacles]; air fragrancing apparatus; dustbins; abrasive discs for kitchen [cleaning] purposes; abrasive pads; abrasive pads for kitchen purposes; abrasive sponges for kitchen [cleaning] use; anti-static cloths for household use; artificial sponges for household purposes; bathroom pails; bottle brushes; buckets; buckets for household use; buckets incorporating castors; buckets incorporating mop wringers; carpet beaters [hand instruments]; carpet shampoo applicators (non-electric -); carpet sweepers; carpet sweepers (non-electric -); cinder sifters for household purposes; cleaning instruments, hand-operated; cleaning mitts of fabric; cloth for washing floors; cloths for cleaning made from cellulose; cleaning tow; cloths for wiping optical lenses; cloths for wiping tableware; cotton waste for cleaning; crumb collecting instruments [non-electric]; crumb trays; dishwashing brushes; dispensers for detergents; dust-pans; dusting apparatus, non-electric; dusting brushes; dusting cloths [rags]; dusting gloves; fabrics (buckets made of woven -); feeding bottle brushes; floor cloths; furniture dusters; glass cleaning implements; glossing cloths [not abrasive]; gloves for household purposes; household gloves for cleaning purposes; kitchen sponges; leathers for cleaning purposes; lint rollers; lint rollers [adhesive] for removing lint from clothing; lintless cleaning cloths; litter trays; materials [cloths] for polishing; metal scouring pads; metallic wool for cleaning purposes; metallic wool for scouring purposes; mop heads; mop pails; mop pails incorporating mop wringers; mop wringers; mops; nebulizers for household use; non-electric floor polishers; pads for cleaning; pads of metal for cleaning; plastic bowls [basins]; plastic buckets; plungers for clearing blocked drains; polishing apparatus and machines, for household purposes, non-electric; polishing gloves; polishing leather; polishing materials for making shiny, except preparations, paper and stone; rinsing pails; rinsing tubs; rubber gloves for household use; scourers for saucepans; scouring cloths; scouring sponges; scrapers for household purposes; skins of chamois for cleaning; smoke absorbers for household purposes; sponges for household purposes; squeegees [for household use]; squeegees [hand-operated] for cleaning; squeegees for dishes; steel wool for cleaning; toilet sponges; steelwool; washing boards; washtubs; wax-polishing (apparatus for -), non-electric; window dusters; wiping cloths; wool waste for cleaning; bowls for plants; containers for flowers; covers, not of paper, for flower pots; flower baskets; flower bowls; flower pot holders; flower pots; flower vases; flower vases of precious metal; garden hose sprayers; gardening gloves; glass vases; holders for flowers and plants [flower arranging]; jardinieres of earthenware; jardinieres of glass; nozzles for hosepipes; nozzles for watering hose; plant baskets; planters of clay; planters of earthenware; planters of glass; planters of plastic; plastic lids for plant pots; plastic spray nozzles; porcelain flower pots; pot plant support sticks; repotting containers for plants; saucers for flower pots; seed tray inserts; seed trays; sprayer nozzles for garden hoses; sprayer wands for garden hoses; sprayers attached to garden hoses; sprinklers; sprinklers for watering flowers and plants; sprinkling devices; terrariums (indoor -) [plant cultivation]; terrariums (indoor -) [vivariums]; vases; water syringes for spraying plants; watering can sprinklers; watering cans; window-boxes; busts made of glass; busts made of terra cotta; busts of china, terra-cotta or glass; ceramic coin boxes; china ornaments; collector plates; commemorative plates; decorative boxes of glass; decorative sand bottles; figurines made of lead crystal; figurines made of terra cotta; garden gnomes of earthenware; garden gnomes of glass; garden gnomes of porcelain; majolica; model figures [ornaments] made of glass; model vehicles [ornaments] made of glass; model vehicles [ornaments] made of porcelain; model vehicles [ornaments] made of terra-cotta; ornamental models made of porcelain; ornamental sculptures made of porcelain; piggy banks; piggy banks of china; plaques of glass; plaques of porcelain; plaques of pottery; porcelain articles for decorative purposes; porcelain eggs; sculptures made from glass; signboards of porcelain or glass; souvenir plates; stained glass figurines; statues of porcelain, ceramic, earthenware or glass; works of art made of crystal; works of art made of earthenware; works of art made of glass; works of art made of porcelain; works of art, of porcelain, terra-cotta or glass; glasses, drinking vessels and barware; abrasive instruments for kitchen [cleaning] purposes; aerosol dispensers, not for medical purposes; beer mugs; beverage glassware; beverage stirrers; bottle baskets coated with precious metal; bottle buckets; bottle coolers; bottle cradles; bottle openers [hand-operated]; bottle openers incorporating knives; bottle openers, electric and non-electric; brandy snifters; champagne buckets; champagne flutes; charms for attachment to beverage glassware for identification purposes; cocktail stirrers; coolers for wine; cooling buckets for wine; cordial glasses; corkscrews with knives; corkscrews, electric and non-electric; cup holders; cups made of plastics; cups, not of precious metal; decanters; drinking bottles for sports; drinking glass holders; drinking goblets; drinking vessels; drip preventers for bottles; fitted liners for ice buckets; glass decanters; glass holders; glasses [drinking vessels]; glassware not included in other classes; goblets; holders for tumblers; ice buckets; horns (drinking -); liqueur sets; liqueur flasks; mugs made of ceramic materials; mugs made of fine bone china; mugs made of plastic; non-electric bottle openers; pewter goblets; pewter tankards; pint glasses; pint tankards; pipettes [wine-tasters]; pitchers; schnapps glasses; shakers; siphon bottles for carbonated water; straws for drinking; tankards; toby jugs; tumblers; whisky glasses; wine bottle cradles; wine buckets; wine decanters; wine glasses; wine jugs; wine strainers; aluminium bakeware; aluminium cookware; aluminium moulds [kitchen utensils]; apothecary jars; autoclaves (non-electric -) for household use; automobile oil funnels; bakers’ tinware; bakeware [not toys]; bakeware; baking containers made of glass; baking dishes made of earthenware; baking dishes made of porcelain; baking mats; baking sheets of common metal; baking tins; baking trays made of aluminium; baking utensils; baskets for domestic use; baskets of common metal for household use; basting spoons; basting spoons, for kitchen use; beaters, non-electric; beaters (non-electric -) for kitchen use; beverage coolers [containers]; blenders for food [non-electric]; blenders, non-electric, for household purposes; bone china tableware [other than cutlery]; bottle coolers [receptacles]; bottle stands; bottles; bowls for candy; bowls for nuts; bowls of precious metal; boxes for dispensing paper serviettes; boxes for sweetmeats; boxes of earthenware; boxes of glass; boxes of porcelain; bread baskets, domestic; bread bins; bread boards; brushes for basting meat; butlers’ trays; butter coolers; butter curlers; butter-dish covers; butter dishes; butter pans; cabarets [trays]; cake brushes; cake domes; cake moulds; cake moulds of common metal; cake moulds of non-metallic materials; cake rings; cake servers; cake stands; cake stands of non-metallic materials; cake tins; cake trays; camping grills; candle extinguishers; candle extinguishers of precious metal; candle holders of wrought iron; candle rings; candlesticks; canister sets; carver rests; carving boards; casseroles [dishes]; cast stone containers for household; cauldrons; caviar coolers; ceramic hollowware; ceramic tableware; ceramics for household purposes; ceramics for kitchen use; cheese boards; cheese-dish covers; chip pan baskets; chocolate molds; chopstick cases; chopsticks; closures for pot lids; coasters (tableware); coasters, not of paper and other than table linen; cocktail sticks; coffee filters, nonelectric; coffee grinders; coffee grinders, hand-operated; coffee percolators, nonelectric; coffee mugs; coffee pots; coffee services [tableware]; coffee services of ceramic; coffee services of china; coffee stirrers; coffeepots, non-electric; combined lids for kitchen containers; confectioners’ decorating bags [pastry bags]; confectioners’ molds; cookery molds [moulds]; containers for household or kitchen use; cookie [biscuit] cutters; cookie jars; cooking funnels; cooking pots; cooking skewers; cooking skewers, not of metal; cooking strainers; cooking utensils for use with domestic barbecues; cooking utensils, non-electric; coolers [non-electric containers]; corn cob holders; coupes; covers for dishes; cream jugs; cruets; crystal [glassware]; cups; cups and mugs; cups made of pottery; cups of paper or plastic; cutlery trays; cutting boards for the kitchen; decorative china; deep fryers, non-electric; demijohns; dish drying racks; dishes [household utensils]; dishes for microwave ovens; dishware; dispensers for cling film [other than fixed]; dispensers for liquid soap [for household purposes]; dispensers for serviettes; disposable lids for household containers; disposable table plates; double boilers; double heat insulated containers for food; draining trays; drinks containers; drip mats for tea; dripping pans; dutch ovens; earthenware; earthenware basins; earthenware not included in other classes; egg cups; egg poachers; egg separators; empty spray bottles; enamel boxes; enamelled jars; epergnes; feeding cups; finger bowls; fireproof dishes; fitted picnic baskets; flasks; flour sifters; foam drink holders; foil food containers; food cooling devices, containing heat exchange fluids, for household purposes; food preserving jars of glass; food storage containers; fruit bowls of glass; fruit cups; fruit presses, nonelectric, for household purposes; funnels; garlic cellars; garlic presses (handoperated -); glass bowls; glass cups; glass flasks; glass flasks [containers]; glass holders for candles; glass jars; glass mugs; glass pans; glass plates; glass pots; glass stoppers; glass storage jars; glass tableware; glass vials [receptacles]; glasses [receptacles]; glassware for household purposes; glue-pots; graters [nonelectric household utensils]; graters for kitchen use; gratin dishes; gravy boats; griddles [cooking utensils]; griddles [non-electric cooking utensils]; gridiron supports; grinders (non-electric -); hand cut crystal glassware; hand-operated food grinders; hand-operated food processor; heat insulated domestic vessels of earthenware; heat insulated domestic vessels of porcelain; heat insulated domestic vessels of glass; heat-insulated containers; heat-insulated containers for beverages; heaters for feeding bottles, non-electric; honey servers; hot pots, not electrically heated; household containers; household or kitchen utensils; household utensils; ice cream scoops; ice cube molds [moulds]; insulated food cover domes; insulating flasks; insulating jars; insulating sleeve holder for beverage cups; insulating sleeve holders for beverage cans; isothermic bags; jam pots; japanese rice bowls (chawan); jars; jars (glass -) [carboys]; jars for household use; juice squeezers; kettles, non-electric; kitchen containers; kitchen grinders, non-electric; kitchen urns [not of precious metal]; kitchen utensils; knife blocks; knife rests; knife rests for the table; laundry baskets; lazy susans; lemon squeezers; litter baskets of metal; lunch boxes; lunch boxes made of metal; lunch boxes made of plastic; meal trays; meat tenderisers for household purposes; melon ballers; menorahs; menu card holders; mess-tins; mess-tins [rice cooking canteens]; metal pans; milk churns; milk pans; mills for domestic purposes, hand-operated; mixing cups; mixing spoons [kitchen utensils]; moulds [kitchen utensils]; muffin tins; mug racks; mug trees; mugs; mugs made of earthenware; mugs made of porcelain; mushroom brushes; mustard pots; napkin dispensers for household use; napkin holders; napkin holders of precious metal; napkin rings of precious metal; non-electric canners [pressure cookers]; non-electric food mixers; non-electric griddles; non-electric meat grinders; non-electric plunger style coffee makers; non-electrical coffee grinders; noodle machines, hand-operated; oven gloves; oven heat resistant pads; oven to table racks; oven-to-table tableware; painted glassware; pancake frying pans; pans; paper cups; paper plates; pastry boards; pastry brushes; pastry cutters; pedal bins; pepper grinders; pepper mills, hand-operated; pepper pots; pepper pots [not of precious metal]; picnic baskets (fitted -), including dishes; picnic boxes; picnic crockery; pie pans; pie tins; pins of metal (cooking -); pizza peels; pizza stones; place card holders; plastic bins [dustbins]; plastic bottles; plastic bowls [household containers]; plastic coasters; plastic funnels; plastic egg holders for domestic use; plastic ice cube moulds; plastic juice box holders; plastic plates; plastic plates [dishes]; plastic water bottles [empty]; plates to prevent milk boiling over; pomanders [containers]; porcelain coasters; porcelain not included in other classes; porcelain ware; portable beverage coolers; portable beverage dispensers; portable coolers; pot lids; pots; pot stands; pottery; pouring spouts for household use; pouring spouts for kitchen use; preserve glasses; presses (garlic -) [kitchen utensils]; pressure cookers; pudding moulds; reamers for fruit juice; refrigerating bottles; relish dishes; reusable plastic water bottles sold empty; reusable stainless steel water bottles sold empty; rice cooking pots [non-electric]; roasting dishes; rolling pins, domestic; rotary cheese graters; sacred vessels; salad bowls; salad drainers (hand-operated -); salad spinners; salt mills; salt shakers; salt shakers [not of precious metal]; sandwich boxes; saucepans; saucepans (earthenware -); saucer lights with snuffers; saucers; scoops [tableware]; scrapers (kitchen implements); services [dishes]; serving bowls; serving platters; serving pots; shakers for spices; shallow bowls; shallow pans for cooking; sifters [household utensils]; siphons for cream; skewers (cooking utensil); skewers for use in cooking; skewers of wood; skillets (non-electric -); skimmers [non-electric kitchen implements]; slow cookers (non-electric -); small jugs; soufflé dishes; soup bowls; spaghetti measurers; spaghetti servers; spaghetti tongs; spatulas; spatulas [kitchen utensils]; spice grinders (non-electric -); spice jars; spice sets; spits [other than parts of cooking apparatus]; spoon rests; sports bottles sold empty; spouts; squeeze bottle [empty]; stands for dishes; steamer baskets; steamers [cookware]; stoppers for bottles; storage jars; strainers; strainers for household purposes; straw dispensers; sugar bowls; sugar bowls [not of precious metal]; syrup jugs; table plates; tableware, other than knives, forks and spoons; tart scoops; tea cups; tea infusers; tea services [tableware]; tea caddies; tea cosies; tea strainers; teapot stands; teapots; tenderizers [kitchen utensils]; thermally insulated flasks for household use; thermally insulated containers for food; toothpick holders; trays for domestic purposes; trays for domestic purposes, of paper; trivets [table utensils]; utensil jars; vacuum flasks for holding drinks; vacuum flasks for holding food; urns; vacuum jars; vacuum jugs (non-electric -); vegetable dishes; vegetable mashers; vegetable racks; vessels of metal for making ices and iced drinks; vinegar cruets; waffle irons, non-electric; water bottles; whisks; whisks, non-electric, for household purposes; whistling kettles; wire baskets [cooking utensils]; woks; glass wool other than for insulation are all products used in the household and/or for everyday use. Therefore, they are similar to a low degree to the opponent’s retail sale services in connection with household products and other products for everyday use in Class 35.

 

However, the contested brush-making articles; unworked and semi-worked glass, not specified for use; billiard table brushes; buckets for industrial use; bottles for pharmaceuticals sold empty; containers (non-metallic -) for holy water; colored sheet glass [not for building]; coloured glass (semi-worked -); common sheet glass [not for building]; decorative glass [not for building]; enamelled glass; fabricated safety glass for installation into vehicles; fiberglass other than for insulation or textile use; fiberglass thread, not for textile use; float glass [semi-worked]; fused quartz; glass (semiworked -) adapted to absorb heat; glass (semi-worked -) adapted to absorb ultraviolet radiation; glass (semi-worked -) for vehicles; glass for vehicle windows [semifinished product]; glass incorporating electrical conductors; glass incorporating fine electrical conductors; glass panels [semi-finished article]; glass powder; glass rods; glass sheets; heat protective glass (semiworked -); heat reflecting glass [semi-worked]; laminated flat glass [not for building]; laminated glass [other than for building]; luminous glass [not for building]; modified sheet glass [not for building]; mosaics of glass, not for building; opaline glass; open pored sintered glass; plate glass [raw material]; plate glass being unworked; plate glass for cars; polished plate glass; porous glass; powdered glass for decoration; pressed glass; profiled glass [semi-finished]; security glass for making into vehicle windows; semi-worked glass; semi-worked glass [except glass used in building]; sheets of glass, other than for building; silica (fused -) [semi-worked product], other than for building; smoothed plate glass; spun glass; stamped glass; tempered glass [not for building]; unworked glass; unworked glass [except glass used in building]; unworked or semi-worked glass (except glass used in building); vitreous silica fibers [fibres], not for textile use; window glass for vehicles are various brush-making articles; brushes, containers and bottles for specific purposes other than household and everyday use; cleaning articles for industrial use, fibres not for textile use and un-worked or semi-worked glass. These goods are dissimilar to the opponent’s retail sale services in connection with textiles, cosmetic products, toys, household products and other products for everyday use in Class 35. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the goods. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary.

 

Similarity between retail services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed goods and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.

 

Contested services in Class 35

 

The term ‘textiles’ in the opponent’s list of services in Class 35, retail sale services in connection with textiles refers to a broad range of goods made of textile.

 

The contested retail services connected with the sale of clothing and clothing accessories; retail store services in the field of clothing; mail order retail services connected with clothing accessories are included in the broad category of the opponent’s retail sale services in connection with textiles. Therefore, they are considered identical.

 

The contested retail services or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; retail services connected with stationery; department store retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment; retail services connected with the sale of furniture; retail services relating to food; shop retail services connected with carpets; stationery shop retail services connected with the sale of stationery, printed matter, computer equipment and peripherals and home entertainment products are considered at least similar to the opponent’s retail sale services in connection with textiles, cosmetic products. The services under comparison have the same nature, since all are sales services, they have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and they have the same method of use.

 

The contested administrative processing of purchase orders; administrative processing of purchase orders within the framework of services provided by mail-order companies; administrative processing and organising of mail order services; advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet; advisory services relating to the ordering of stationery; advisory services relating to the purchase of goods on behalf of business; advisory services relating to the purchase of goods on behalf of others are various business administration and advisory services. These services are dissimilar to the opponent’s retail sale services in connection with textiles, cosmetic products, toys, household products and other products for everyday use. The services have a different nature, a different purpose and a different method of use. They are neither complementary nor in competition. Moreover, they are not provided by the same undertaking and they target different end users.

 

 

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 and similar (to varying degrees) are directed at the public at large. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

 

 

3. The signs

 

 

 

kik
Earlier trade mark	Contested sign

 

 

The relevant territory is Spain.

 

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 earlier mark is a word mark, ‘kik’, which is meaningless for the relevant public and, therefore, distinctive. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether words are presented in upper or lower case letters or in a combination thereof.

 

The contested sign is a figurative mark composed of the bold, black, underlined verbal element ‘KiG’, of which the letters ‘K’ and ‘G’ are in upper case and the lower case letter ‘i’ features a red dot. Underneath is the word ‘GLASSWARE’ in smaller, black, upper case letters.

 

The element ‘KiG’ in the contested sign is the dominant element, as it is the most eye-catching and overshadows the word ‘GLASSWARE’, which is depicted in much smaller characters. The words ‘KiG’ and ‘GLASSWARE’ will be perceived as meaningless by the relevant public and are, therefore, distinctive.

 

Visually, the signs both contain the letters ‘Ki*’. However, they differ in the last letter, ‘k’, of the earlier mark and the last letter, ‘G’, of the word ‘KiG’ in the contested sign. Furthermore, the marks differ in the additional word element ‘GLASSWARE’, which is a non-dominant element, and the graphical representation of the contested sign, as described above, which is not considered that sophisticated to take away the attention from the dominant verbal element which it seems to embellish

 

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

 

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘Ki’, present identically in both signs. The pronunciation differs in the sound of the last letter ‘k’ of the earlier mark and the last letter ‘G’ of the word ‘KiG’ in the contested sign. However, these two last letters are pronounced very similarly, which makes the sound of the words ‘kik’ and ‘KiG’ highly similar. Furthermore, the marks differ in the sound of the additional word ‘GLASSWARE’ in the contested sign, which is, however, non-dominant for which it might even not be pronounced at all.

 

Therefore, the signs are aurally similar to a high 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.

 

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

 

 

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.

 

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

 

5. Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

 

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect ‘Lloyd Schuhfabrik’, § 20; ‘Sabèl’, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

 

The contested goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar to the services protected by the earlier mark.

 

The signs are visually similar to an average degree and aurally similar to a high degree. None of the marks evokes any concepts for which the conceptual comparison remains neutral.

 

The earlier mark ‘kik’ and the dominant element ‘KiG’ of the contested sign, which will attract the main attention of the relevant public, have both three letters; both are, consequently, short words and it is considered that the fact that they differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. The words differ in their last letters which are phonetically very similar to each other. Consequently, the fact that they coincide in two letters and that the differing one is phonetically very similar, leads to a finding of likelihood of confusion. The additional non-dominant word ‘GLASSWARE’ and the stylisation of the contested sign are not sufficient to counteract the similarities between the marks.

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s International trade mark registration No 893 026 designating Spain.

 

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 varying degrees) to those of the earlier trade mark. In accordance with the interdependence principle described above, the low similarity between some of the services is offset by the high aural similarity between the marks.

 

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.

 

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non condition for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

The international registration No 893 026 also designated Austria, Benelux, Bulgaria, Czech Republic, France, Croatia, Hungary, Italy, Poland and the Slovak Republic and the  opponent also based its opposition on the German trade mark registration No 30 321 863 for the word mark ‘kik’;  However, even had these rights and territories been taken into account the result would not differ since  they cover the same scope of services as such no likelihood of confusion exists with respect to those goods and services found dissimilar. As such, the proof of use does not have to be assessed for the abovementioned earlier rights and territories.

 

 

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

 

 

Chantal VAN RIEL

Saida CRABBE

Vanessa PAGE

 

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.