OPPOSITION No B 2 439 233

Ferrero S.p.A., Piazzale Pietro Ferrero, 1, 12051 Alba (Cuneo), Italy (opponent), represented by Jacobacci & Partners S.P.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative)

a g a i n s t

Tomasz Kawałko Trofeum, ul. Nowodworcowa 22, 81581 Gdynia, Poland (applicant), represented by Piotr Moksa, al. Zwycięstwa 96/98, 81451 Gdynia, Poland (professional representative).

On 27/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 439 233 is partially upheld, namely for the following contested services:

Class 35:        Import-export agency services; business brokerage, wholesaling and retailing of the following goods: pushchairs, playthings, children’s clothing, children’s furniture, mattresses and bedding, baby bouncers and infant walkers, swings, sling bags for carrying infants, bicycles, breathing monitors, electronic baby monitors, safety gates; marketing and presentation of goods via television, radio, the internet, computer networks and other means of communications with the option of mail order; advertising agencies, advertising and business information, for others, arranging and conducting of advertising campaigns, promotional campaigns, demonstration and presentation of goods, auctioneering, verbal, audio, audiovisual and multimedia advertising for transmission via television, radio, the internet, computer networks and other means of communications; dissemination, updating and rental of advertising matter, rental and rental brokerage of space (including virtual space) for advertising purposes, arranging of trade fairs and exhibitions for commercial and/or advertising purposes, arranging and conducting, for others, of trade fairs, exhibitions, demonstration and presentation of goods; accepting orders for goods via means of telecommunication.

Class 38:        News agencies; radio and television broadcasting, communications and data transmission via the internet, computer networks and other means of communication, electronic mail, electronic mail accounts; providing user access to information on computer networks, setting up and providing computer services relating to discussion lists and forums; electronic advertising.

2.        European Union trade mark application No 12 916 961 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 12 916 961. The opposition is based on, inter alia, Italian trade mark registration No 1 525 361. 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.

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 Italian trade mark registration No 1 525 361.

1. The goods and services

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

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 12:        Vehicles; apparatus for locomotion by land, air or water.

Class 18:        Leather and imitation of leather, and goods made of these materials and not included in other classes, animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

Class 20:        Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 25:        Clothing, footwear, headgear.

Class 28:        Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 35:        Advertising; business management; business administration; office functions.

Class 38:        Telecommunications.

The contested services are the following:

Class 35:        Import-export agency services; business brokerage, wholesaling and retailing of the following goods: pushchairs, vehicle safety seats for children, playthings, children’s clothing, children’s furniture, mattresses and bedding, baby bouncers and infant walkers, swings, sling bags for carrying infants, bicycles, breathing monitors, electronic baby monitors, safety gates; marketing and presentation of goods via television, radio, the internet, computer networks and other means of communications with the option of mail order; advertising agencies, advertising and business information, for others, arranging and conducting of advertising campaigns, promotional campaigns, demonstration and presentation of goods, auctioneering, verbal, audio, audiovisual and multimedia advertising for transmission via television, radio, the internet, computer networks and other means of communications; dissemination, updating and rental of advertising matter, rental and rental brokerage of space (including virtual space) for advertising purposes, arranging of trade fairs and exhibitions for commercial and/or advertising purposes, arranging and conducting, for others, of trade fairs, exhibitions, demonstration and presentation of goods; accepting orders for goods via means of telecommunication.

Class 38:        News agencies; radio and television broadcasting, communications and data transmission via the internet, computer networks and other means of communication, electronic mail, electronic mail accounts; providing user access to information on computer networks, setting up and providing computer services relating to discussion lists and forums; electronic advertising.

Earlier Italian trade mark registration No 1 525 361 is registered for the entire class headings of Classes 9, 12, 18, 20, 25, 28, 35 and 38 of the Nice Classification. It was filed on 16/05/2012. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the Office considers that its scope of protection includes both the natural and usual meaning of the general indications in the heading and the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 10th edition. Consequently, in addition to the abovementioned advertising; business management; business administration; office functions, the earlier mark also covers the entire alphabetical list of services in Class 35, which includes auctioneering and rental of vending machines.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

The contested marketing and presentation of goods via television, radio, the internet, computer networks and other means of communications with the option of mail order; advertising agencies, advertising and business information, for others, arranging and conducting of advertising campaigns, promotional campaigns, demonstration and presentation of goods, verbal, audio, audiovisual and multimedia advertising for transmission via television, radio, the internet, computer networks and other means of communications are included in the broad category of the opponent’s advertising. Therefore, they are identical.

Auctioneering is identically contained in both lists of services.

The contested dissemination, updating and rental of advertising matter, rental and rental brokerage of space (including virtual space) for advertising purposes, arranging of trade fairs and exhibitions for commercial and/or advertising purposes, arranging and conducting, for others, of trade fairs, exhibitions, demonstration and presentation of goods are all advertising-related services and are, as such, included in the broad category of the opponent’s advertising. It follows that the services are identical.

The contested import and export agencies relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. Although business consultants do not in fact carry out import–export operations, their advice on them is key to a company’s strategy; therefore, import and export agencies are considered similar to the opponent’s business management, since they have the same distribution channels and providers, and they target the same public.

The contested accepting orders for goods via means of telecommunication is included in the broader category of business administration services, namely business support services provided by specialised companies which study their client’s needs and provide all the necessary information and advice in order to help them with the organisation and running of their business. These services cover the complete process of obtaining goods and services and are aimed at finding, evaluating and engaging suppliers of goods and services. These services have the same purpose as the opponent’s business management and can have the same end users. Therefore, they are considered similar to a low degree.

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 retailing of the following goods: of pushchairs, playthings, children’s clothing, children’s furniture, mattresses and bedding, baby bouncers and infant walkers, swings, sling bags for carrying infants, bicycles, breathing monitors, electronic baby monitors, safety gates is similar to a low degree to the opponent’s vehicles in Class 12, playthings in Class 28, clothing in Class 25, furniture in Class 20, games and playthings in Class 28 and apparatus for recording, transmission or reproduction of sound or images in Class 9.

The same principles apply to the following services: business brokerage, wholesaling of the following goods: of pushchairs, playthings, children’s clothing, children’s furniture, mattresses and bedding, baby bouncers and infant walkers, swings, sling bags for carrying infants, bicycles, breathing monitors, electronic baby monitors, safety gates.

Retail services of vehicle safety seats for children and the opponent’s goods are not similar. Apart from being different in nature, since 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 goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services 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 only similar.

The same principles apply to the following services: business brokerage, wholesaling of the following goods: safety seats for children.

The contested business brokerage, wholesaling and retailing of the following goods: safety seats for children are also dissimilar to all the opponent’s goods and services, including the goods and services in the alphabetical lists covered by the earlier mark. These goods and services have different natures, purposes and methods of use, target different relevant publics, are not produced/provided by the same undertakings and are not complementary or in competition.

Contested services in Class 38

The contested news agencies; radio and television broadcasting, communications and data transmission via the internet, computer networks and other means of communication, electronic mail, electronic mail accounts are included in the broad category of the opponent’s telecommunications. Therefore, they are identical.

Telecommunications, also known as ‘telecom’, is a field that covers the exchange of information over (significant) distances by electronic means and refers to all types of content: voice, data, video transmission, etc. ‘Telecommunications’ is a broad term that includes a wide range of information-transmitting technologies, such as telephones (wired and wireless); telegraphs; microwave communications; radio and television broadcasting; optical fibre, laser and light beams; satellites; and, of course, the internet. The simplest form of telecommunication takes place between two stations (point to point), but it is common for multiple transmitting and receiving stations to exchange data among them. Such an arrangement is called a telecommunications network. The internet is the largest example of a telecommunications network. On a smaller scale, examples include local area networks (LANs); corporate and academic wide-area networks (WANs); telephone networks; cellular/mobile networks; police and fire communications systems; taxi dispatch networks; and groups of amateur (ham) radio operators and broadcasting networks. Telecommunications systems are generally run by telecommunications service providers. Under this large umbrella of companies that provide different types of telecommunications services are internet service providers, wireless service providers, radio and television broadcasters, cable companies, satellite television providers and managed service providers.

Advisory services are services for the provision of advice that is tailored to the circumstances or needs of a particular user and recommendations for specific courses of action by the user. Provision of information, on the other hand, refers to the provision of material (general or specific) to a user about a matter or service. In the present case, the services related to provision of information are identical to the opponent’s telecommunication services. They consist mainly in the provision of information regarding telecommunications, and it is common in the market for companies providing these services (telecommunication services) to also provide complementary information and consultancy related thereto. Moreover, these services can target the same end users. Therefore, the contested providing user access to information on computer networks, setting up and providing computer services relating to discussion lists and forums; electronic advertising are similar to the opponent’s telecommunication services.

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 services found to be identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise (telecommunications engineers, researchers, IT experts, etc.). The degree of attention may vary from average to high, depending on the nature and type of services concerned, and, in particular, due to the highly technical nature, specificity and price of some of the services, which are purchased infrequently.

3. The signs

	KINDERPRAMS
Earlier trade mark	Contested sign

The relevant territory is Italy.

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).

Visually, the signs coincide in the sequence of letters ‘Kinder’. However, they differ in the additional letters ‘prams’ at the end of the contested sign and in the slight stylisation of the letters in the earlier mark.

Consumers generally tend to focus on the first part of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the signs’ coinciding first element has to be taken into account when assessing the likelihood of confusion between the marks.

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

Aurally, the pronunciation of the signs coincides in the sound of the syllables ‛kin-der’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the additional syllable ‛prams’ at the end of the contested mark.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 and 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 contested services are partly identical, partly similar and partly dissimilar to the opponent’s goods and services.

The earlier mark is reproduced at the beginning of the contested sign. Consumers generally tend to focus on the first part of a sign when being confronted with a trade mark. Furthermore, the degree of graphical stylisation of the earlier mark is very limited.

Bearing the aforementioned in mind, as well as the fact that consumers rarely examine marks side by side, relying therefore on their imperfect recollection, the Opposition Division considers that the differences between the earlier trade mark and the contested sign are not sufficient to counterbalance the overall similarity between them, and that the relevant public, even with a high degree of attention, may believe that the services that are identical or similar to various degrees come from the same undertaking or at least from economically linked undertakings. Therefore, the opposition is partly well founded on the basis of the opponent’s Italian trade mark registration No 1 525 361.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• Italian trade mark registration No 1 338 020 for the figurative mark  , registered for goods and services in Classes 9,18, 25, 28 and 38.
• Italian trade mark registration No 1 446 680 for the figurative mark  , registered for goods and services in Classes 9, 12, 18, 20, 25, 28, 35 and 38.

Since these marks are identical to the one which has been compared and cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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 shall 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

Francesca DINU

Cristina CRESPO MOLTO

Loreto URRACA LUQUE

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.