OPPOSITION DIVISION
OPPOSITION No B 2 514 480
Unialco, S.L., Carretera Oiartzun, s/n, B. Ventas, 20305 Irun (Guipuzcoa), Spain
(opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain
(professional representative)
a g a i n s t
Dansk Supermarked A/S, Rosbjergvej 33, 8220 Brabrand, Denmark (applicant),
represented by Bech-Bruun law firm, Værkmestergade 2, 8000 Århus C, Denmark
(professional representative).
On 13/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 514 506 is partially upheld, namely for the following
contested services:
Class 35: Retail services connected with the sale of paints and washes,
decorating goods, namely, dust sheets, paint brushes, paint trays,
paint rollers, wallpaper and sandpaper, cleaning articles and goods,
oils, candles, vehicle maintenance and repair goods,
pharmaceutical, veterinary or sanitary preparations and
substances, pet care goods, namely, collars, leads and animal
bedding, domestic machines, hand tools, cutlery, knives,
computers, signalling goods, televisions, audio visual equipment,
batteries, electrical vehicles, audio visual media and goods,
telephones, telecommunication equipment, anti-theft devices,
scales, sports equipment, gym equipment, exercise equipment,
nutritional products for healthcare, food products for healthcare,
first aid products for the home, lighting products, locks, security
articles, gardening products, namely, garden tools (hand operated),
gardening gloves, lawnmowers, strimmers and hedge trimmers,
flowers, plants, trees, prams, pushchairs, clocks, horological items,
jewellery, crockery, kitchen accessories, namely, kettles, toasters
and electric cooking utensils, printed matter, stationery, artists’
goods, gift cards and gift wrap, bags of all kinds, umbrellas,
building materials, camping articles and goods, namely, tents,
awnings, ground sheets and camping stoves, travel goods, namely,
suitcases, travelling bags, handbags, rucksacks, holdalls, purses,
wallets and luggage, clothing goods, toys and games and
playthings, foodstuffs for animals birds or fish, horticultural or
forestry products, seeds, trees, gardening tools, curtains, bathroom
fittings, furniture, exercise equipment, household cleaning
equipment, household decorating equipment, household care
equipment, household bedding goods, household decorations and
ornaments, soft furnishings and textiles for the home, household
goods, namely, household or kitchen utensils and containers,
glassware, porcelain and earthenware, beer mugs, bottles, cooking
Decision on Opposition No B 2 514 480 page: 2 of 22
pots, corkscrews, cups, egg cups, dishes, drinking glasses, flasks,
storage jars, ice-cube trays, mugs, plates, saucers, crockery, bins,
soap boxes and water bottles, foods, drinks, electric cables,
batteries, magnetic tapes and cassettes, videos, CDs, DVDs,
optical and magneto-optical discs, CD-ROMs, electronic games,
software games, mathematical instruments, encoded cards and
cards bearing machine readable information, identity cards,
scientific equipment, data processing equipment, computers,
computer firmware, hardware and software, hifi systems, remote
controls, home cinema equipment, videotapes, sound recordings,
video recordings, computer accessories, printers, music players,
cameras, televisions, television apparatus, satellite decoders, DVD
players, optical storage disc players, video players, DVD recorders,
video recorders, camcorders, radios, telephone apparatus, mobile
telephones, information in electronic form, spectacles, sun glasses,
contact lenses, electric door bells, glasses cases, fire
extinguishers, fire blankets, electric irons, ear plugs, battery
chargers, satellite navigation equipment, electric and electrical
antitheft devices, measuring instruments, films, cameras, video
cameras, projectors, holders for cassettes, videos, DVDs, or other
sound recordings, mp3 players, mp3 or mp4 recorders, players or
recorders for electronic or digital media, covers, cases, docking
stations, holders or headphones for telecommunication apparatus,
for multimedia apparatus or for multimedia players or recorders,
accessories for telecommunication or multimedia players or
recorders, telescopes, binoculars, ear plugs, electric irons, electric
hair curling equipment, electric hair preparations, treatment or
styling equipment, electric irons, electric steam irons, electric
razors, electric sun beds, scales, bathroom scales, food or drink
scales, electric locks, cabinets for loudspeakers, cabinets for audio,
visual or audio visual equipment, burglar alarms, burglar
surveillance equipment, power tools, electrical decorating
equipment, media storage units, cases and cabinets for DVDs,
optical and magneto-optical discs, CDs, videos tapes, electrical or
electronic amusement apparatus, digital receiver boxes, satellite
dishes, digital radios, headphones, fire blankets, protective
clothing, electrical tyre pressure machines, cases and carriers,
hand held multimedia devices, batteries, compasses, parts and
fittings for all the aforesaid goods, electronic tracking devices.
2. European Union trade mark application No 13 085 40211 is rejected for all the
above services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
Decision on Opposition No B 2 514 480 page: 3 of 22
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 13 085 40211 . The opposition
is based on the following earlier rights: Spanish trade mark registration No 1 275 855
‘NETTO SUPERMERCADOS’, Spanish trade mark registration No 1 992 081
‘NETTO’, Spanish trade mark registration No 1 992 082 ‘NETTO’, Spanish trade
mark registration No 2 185 113 ‘NETTO’, Spanish trade mark registration No
2 185 114 ‘NETTO’ and Spanish trade mark registration No 2 222 553
(with a red colour claim for certain elements). The opponent
invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of
filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so
requests, the opponent must furnish proof that, during the five-year period preceding
the date of publication of the contested trade mark, the earlier trade mark has been
put to genuine use in the territories in which it is protected in connection with the
goods or services for which it is registered and which the opponent cites as
justification for its opposition, or that there are proper reasons for non-use. The
earlier mark is subject to the use obligation if, at that date, it has been registered for
at least five years.
The same provision states that, in the absence of such proof, the opposition will be
rejected.
The applicant requested that the opponent submit proof of use of the trade marks on
which the opposition is based – those listed above in the ‘REASONS’ section of the
decision.
The contested application was published on 23/01/2015. The opponent was therefore
required to prove that the trade marks on which the opposition is based were put to
genuine use in Spain from 23/01/2010 to 22/01/2015 inclusive.
The request was submitted in due time and is admissible as the earlier trade marks
were registered more than five years prior to the relevant date mentioned above.
Decision on Opposition No B 2 514 480 page: 4 of 22
Furthermore, the evidence must show use of the trade marks for the goods and
services on which the opposition is based, namely the following:
Spanish trade mark registration No 1 275 855 ‘NETTO SUPERMERCADOS’:
Class 39: Supermarket services.
Spanish trade mark registration No 1 992 081 ‘NETTO’:
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and
cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and
milk products; edible oils and fats.
Spanish trade mark registration No 1 992 082 ‘NETTO’:
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and
preparations made from cereals, bread, pastry and confectionery, ices;
honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces
(condiments); spices; ice.
Spanish trade mark registration No 2 185 113 ‘NETTO’:
Class 16: Paper, cardboard and goods made from these materials, not included
in other classes; printed matter; bookbinding material; photographs;
stationery; adhesives for stationery or household purposes; artists’
materials; paint brushes; typewriters and office requisites (except
furniture); instructional and teaching material (except apparatus);
plastic materials for packaging (not included in other classes); playing
cards, printers’ type; printing blocks.
Spanish trade mark registration No 2 185 114 ‘NETTO’:
Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit
drinks and fruit juices; syrups and other preparations for making
beverages.
Spanish trade mark registration No 2 222 553 :
Class 39: Distribution, packaging, transport; distribution of goods for
supermarkets and hypermarkets.
According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the
request for proof of use), the evidence of use must consist of indications concerning
the place, time, extent and nature of use of the opposing trade mark for the goods or
services in respect of which it is registered and on which the opposition is based.
On 15/12/2016, in accordance with Rule 22(2) EUTMIR (in the version in force at the
moment of filing the request for proof of use), the Office gave the opponent until
20/02/2017 to submit evidence of use of the earlier trade marks. On 20/02/2017,
within the time limit, the opponent submitted evidence of use.
Decision on Opposition No B 2 514 480 page: 5 of 22
The opponent submitted evidence in a structured way. A copy of the set of evidence
has been sent to the applicant. For the sake of clarity the Opposition Division will
stick to this structure and the references to various documents provided by the
opponent.
The evidence to be taken into account is the following:
Attachment 1 – Evidence related to the use of the trade marks during 2010:
1.1. Undated pictures of the inside and outside of buildings displaying the
sign . It can be inferred from the pictures that the
buildings are supermarkets selling a variety of consumer goods.
1.2. Undated pictures of lorries on which the trade mark
is displayed.
1.3. An undated picture of a football team. Contrary to the opponent’s
statement none of the earlier marks is visible on the picture.
1.4. Undated document in Spanish displaying a picture of a building
bearing the trade mark . In its submissions the
opponent provides translation of parts of the document which the
opponent considers relevant. In particular the document provides
information regarding the opening of a ‘NETTO’ hypermarket in Alhama
(Spain) in 2006 and a ‘NETTO’ hypermarket in Estella (Spain) in 2010.
1.5. A document which resembles a page of a catalogue (not translated).
1.6. Promotional leaflets showing the sign . The
leaflets promote a wide variety of consumer goods – foodstuffs, clothing,
toys, laundry preparations, household and kitchen utensils, etc. The
leaflets can be dated to the year 2010.
1.7. A document issued by the Estella Town Council attesting the receipt
of the tax payable for the commencement, on 25 November 2010 of the
operation of a business described as ‘retailing through hypermarkets
offering foodstuffs and a broad range of goods on a self-service basis’.
The sign ‘NETTO’ is referenced in the document as ‘Trade Name’.
Decision on Opposition No B 2 514 480 page: 6 of 22
Attachment 2 – Evidence related to the use of the trade marks during 2011,
namely promotional leaflets showing the sign . The
leaflets promote a wide variety of consumer goods – foodstuffs, clothing, toys,
laundry preparations, household and kitchen utensils, etc. The leaflets can be
dated to the year 2011.
Attachment 3 – Evidence related to the use of the trade marks during 2012
3.1. Three invoices issued by (i) Hiper Costa Esmeralda, S.L. (Netto
Elgoibar and Netto Alhama supermarkets) to Panaderia Etxeberi, S.L. in
February for the rent payment due by the bread shop; (ii) Almacen de
Patatas S.L. to Hiper Costa Esmeralda, S.L. in March 2012 for the
delivery of fruits and vegetables; and (iii) Hiper Costa Esmeralda, S.L.
(Netto Elgoibar) to Elgonet Sistemas Informaticos S.L. in December
2012.
3.2. Promotional leaflets showing the sign . The
leaflets promote a wide variety of consumer goods – foodstuffs, clothing,
toys, laundry preparations, household and kitchen utensils, etc.
3.3. Leaflets relating to specific promotions of wines, meat, etc. in 2012.
3.4. Undated document in Spanish referred to by the opponent as Info
bulletin. The document contains various related information, for instance
regarding to the opening of healthy food sections in the ‘NETTO’
supermarkets, in particular in the town of Mendibil (Spain) and regarding
sponsorship activities.
3.5. Undated document in Spanish referred to by the opponent as Info
bulletin. In its submissions the opponent provides translation of parts of
the document which the opponent considers relevant. In particular the
document provides information regarding the opening of a ‘NETTO’
hypermarket in Altatsu in 2003, agreement signed with the fisherman
association of Santoña (Cantabria) for the sale of fresh fish.
Attachment 4 – Evidence related to the use of the trade marks during 2013
4.1. Excerpt from the newspaper Diario de Navarra of 21/02/2013
displaying an advertisement for particular foodstuffs products showing the
trade mark .
4.2. Leaflets promoting special offers for foodstuffs, kitchen utensils, etc.
during 2013.
Decision on Opposition No B 2 514 480 page: 7 of 22
4.3. Recruitment notice published in the newspaper El Correo of
02/06/2013 displaying the sign .
4.4. – 4.10. Invoices for purchase of various goods, mainly foodstuffs by
Hiper Costa Esmeralda S.L. (Netto Estella).
4.11. Two documents relating to the NETTO establishments in Laredo
(Cantabria) regarding various activities involving the NETTO
supermarkets.
Attachment 5 – Evidence related to the use of the trade marks during 2014
5.1. Various notices sent to the works council concerning the installation
of video surveillance systems at the NETTO supermarkets in Laredo,
Santander and Castro Urdiales and on the opening hours on 6 December
(bank holiday) at the NETTO supermarkets in Laredo and Castro
Urdiales.
5.2. – 5.5. Invoices for the delivery of various consumers goods to the
NETTO supermarkets in April, September and November.
The applicant argues that the opponent did not submit translations of some of the
evidence of use (in particular attachments 1.4, 3.4 and 3.5) and that in case no
translation is provided this evidence should not be taken into consideration. However,
the opponent is not under any obligation to translate the proof of use, unless it is
specifically requested to do so by the Office (Article 10(6) EUTMDR, former
Rule 22(6) EUTMIR in force before 01/10/2017). Taking into account the nature of the
documents that have not been translated and are considered relevant for the present
proceedings, namely the ones presented as attachments 1.4, 3.4 and 3.5, and the
fact that the opponent indeed provided translations of the parts that it considers
relevant, the Opposition Division finds that there is no need to request a translation.
The invoices and the promotional leaflets show that the place of use is Spain. This
can be inferred from the language of the documents (‘Spanish’) and some addresses
in Spain. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
The documents filed, namely the pictures, the invoices and the leaflets provide the
Opposition Division with sufficient information concerning the commercial volume, the
territorial scope, the duration, and the frequency of use. The evidence relates to at
least few operational supermarkets, that is a chain of supermarkets which already
justifies an extent that is sufficient to accept genuine use.
In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before
01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in
accordance with its function, of use of the mark as registered, or of a variation thereof
according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for
the goods and services for which it is registered.
According to Article 18(1), second subparagraph, point (a), EUTMR, the following will
also constitute use within the meaning of paragraph 1: use of the European Union
trade mark in a form differing in elements that do not alter the distinctive character of
Decision on Opposition No B 2 514 480 page: 8 of 22
the mark in the form in which it was registered, regardless of whether or not the trade
mark in the form as used is also registered in the name of the proprietor. When
examining the use of an earlier registration for the purposes of Article 47(2) and (3)
EUTMR, Article 18 may be applied by analogy to assess whether or not the use of
the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the evidence shows use of the signs ‘NETTO’ and
. Use of this signs can also be considered use for the trade
mark ‘NETTO SUPERMERCADOS’ since ‘SUPERMERCADOS’ is a non-distinctive
element and its omission does not alter the distinctive character of the sign as
registered. Same is true for the figurative elements of the design to which any
distinctive character can hardly be attributed – the figurative element placed before
the verbal element Netto is a stylised presentation of a trolley which is weak in
relation to supermarket services. The frame is a purely decorative element and the
stylisation of the letters of the verbal element is not particualrly imaginative.
The evidence of use shows that the mark has been used for supermarket services.
No use has been proven for any other of the goods and services covered by the
earlier marks.
Since the opponent did not prove use for the goods and services covered by Spanish
trade mark registration No 1 992 081 ‘NETTO’, Spanish trade mark registration No
1 992 082 ‘NETTO’, Spanish trade mark registration No. 2 185 113 ‘NETTO’, Spanish
trade mark registration No 2 185 114 ‘NETTO’ and Spanish trade mark registration
No 2 222 553 the opposition is hereby rejected pursuant to
Article 47(2) and (3) EUTMR as far as it is based on these five earlier rights.
The examination proceeds based on the opponent’s Spanish trade mark registration
No 1 275 855 ‘NETTO SUPERMERCADOS’ for the services in Class 39
‘Supermarket services’.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in
question, come from the same undertaking or, as the case may be, from
economically linked undertakings. Whether a likelihood of confusion exists depends
on the appreciation in a global assessment of several factors, which are
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
a) The goods and services
The services on which the opposition is based are the following:
Class 39: Supermarket services.
Decision on Opposition No B 2 514 480 page: 9 of 22
The contested goods and services are the following:
Class 1: Chemicals used in agriculture, horticulture and forestry; unprocessed
artifical resins, unprocessed plastics; manures, fire extinguishing
compositions; tanning substances; adhesives used in industry;
adhesives for wallpaper and tiles; antifreeze; wallpaper removing
compositions and preparations; water softeners; fertilisers; compost;
chemicals for domestic or garden use; cellulose thinners; wallpaper
removing preparations; paint removal preparations; glue.
Class 2: Paints, varnishes lacquers; preservatives against rust and
deterioration of wood; colorants; mordants; raw natural resins; metals
in foil and powder form for painters; decorators, printers and artists;
inks; dyes; raw natural resins; thinners for paints; vehicle chassis
coatings; undersealing for vehicles; enamels.
Class 3: Soaps; essential oils; preparations for the hair and scalp; sanitary
preparations being toiletries; bleaching preparations included in Class
3; substances for laundry use; cleaning, polishing and scouring
preparations; dishwasher tablets; dishwashing substances; stain
removers; dry cleaning preparations; non-medicated toilet
preparations; abrasive preparations (not for dental use); soaps,
perfumes, essential oils; cosmetics; hair lotions; dentifrices; depilatory
preparations; preparations for the body, hair, scalp, skin, eyes and
nails; cosmetics, makeup; lipstick, lip gloss, lip balms, lip liner, lip
colour; lip contour; nail colour; foundation, face powder, blush;
mascara, eyeliner, eye shadow; moisturising creams, lotions,
cleansers, serums and toners, facial masks, face creams; body
creams; talc; deodorants; anti-perspirants; body lotions; creams;
emulsions; hair care products, shampoo, conditioner, hair gel, hair
colour, hair mousse; perfumes, colognes; essential oils; toiletries,
fragrances; eye makeup; depilatories; cotton sticks for cosmetic
purposes; cotton wool for cosmetic purposes; pumice stones;
dentifrices and non-medicated preparations for the care of teeth and
gums; sun tanning preparations; preparations for inhibiting or
preventing sun tanning.
Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and
binding compositions; fuel (including motor spirit) and illuminants;
candles, wicks; oil; industrial oils and greases; lubricants; fuels
(including motor spirits); petroleum; diesel fuel; illuminants; petrol;
petroleum products; dry and natural gas; paraffin; gasoline; diesel oil;
fuel oil.
Class 5: Pharmaceutical preparations; analgesic products; antiseptic
preparations for wound care; wound dressings; plasters; bandages
and materials for dressings; sanitary preparations for medical
purposes; dietetic substances adapted for medical use; first aid boxes;
vitamin preparations; preparations and substances for dental use;
preparations for the diagnosis of pregnancy; homeopathy preparations
and substances; tissues impregnated with pharmaceutical lotions;
contraceptive preparations; disinfectants; veterinary preparations;
dietetic substances adapted for medicinal use; medicinal herbs; herbal
teas for medicinal purposes; fish oils; vitamin and mineral preparations
and supplements; food for babies; dental wax; preparations for
Decision on Opposition No B 2 514 480 page: 10 of 22
destroying vermin; fungicides, herbicides; air freshening preparations;
air purifying preparations; incontinence products; fly destroying
preparations; medicated bathing preparations.
Class 6: Aluminium foil, bins of metal, metal containers for compressed gas or
liquid air, chains for dogs, door bells, door handles, door knockers,
locks for bags, locks for vehicles, nails, padlocks, steel wire, and small
items of metal hardware; vehicles number plates, swimming pools
(structures), metal building materials, ironmongery, pipes and tubes;
cables (non-electric), wires (not electric or fuse wires), safes,
cashboxes, welding and soldering metals, keyrings, key blanks,
ladders, fences, door gratings, furniture fittings; bells, tanks, locks,
work-holding devices, keys and articles of hardware, all included in
class 6; staples, nails; Containers of metal [storage, transport]; keys;
parts and fittings included in Class 6 for all the aforesaid goods.
Class 7: Electrically powered hand tools; power operated tools; cordless power
tools; motors, machines, generators and pumps, all for use in building,
decorating plumbing, woodworking or metalworking; citrus presses;
portable electric power drills; sanders and saws; power tools all for
sale in kit forms; kits of parts, fittings and accessories for power tools,
grass cutting machines and clippers; hedge trimmers; power tool
accessories; lawn mowers; electric can openers; electric tin openers;
garden rollers; electric appliances for preparing food and drinks;
grinding machines; coffee mills; vacuum cleaners; washing machines;
high pressure washers; food processors; electric blenders;
dishwashers; drilling machines; spray guns; hammers [part of
machines], electric and pneumatic hammers, including hand-held,
hydraulic hammers; electric knives; weeding machines; electric
whisks; steam cleaners; carpet cleaners; kitchen tools [electric
utensils], kneading machines, electric food slicers, blenders, electric
for household purposes, electric kitchen machines for food preparation
[other than cooking]; sharpening wheels (parts of machines);
automatic vending machines; power tools; electrical paint strippers,
electrical wallpaper strippers, electrical blow painters, electrical paint
applicators; parts, fittings and accessories for all the aforesaid goods.
Class 8: Hand tools and implements (hand operated); razors; tweezers; knives;
pedicure sets; manicure sets; nail clippers; cutlery; can and jar
openers, fruit and vegetable peelers, pizza cutters, cheese planes,
fruit corers, tongs, canapé forks and spreaders, spiral slicers and nut
crackers; tool accessories, namely saw blades, bits, router bits; screw
driver bits; sharpening wheels; abrasive tools and files and abrasive
sheets; wrenches, cutters, shears, chisels, scrapers, screwdrivers,
saws and hammers; manicure and pedicure sets; electric irons;
electric hair curling equipment; electric steam irons; electric razors;
hair cutting scissors, clippers for personal use, electric and non-
electric, electric hair clippers, curling tongs, depilation appliances,
electric and non-electric; parts, fittings and accessories for the
aforesaid goods.
Class 9: Spectacles; spectacle chains; spectacle holders; eye glasses,
sunglasses, goggles for sports; optical apparatus and instruments;
spectacle frames; anti-glare visors, egg timers; photographic,
cinematographic, weighing, measuring, signalling, checking
Decision on Opposition No B 2 514 480 page: 11 of 22
(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; mechanisms for coin-operated
apparatus; cash registers, calculating machines, data processing
equipment for computers; fire-extinguishing apparatus; electrical
fittings for domestic use; electric cables; batteries; magnetic tapes and
cassettes, videos, CDs, DVDs, optical storage discs, CD-ROMs;
software games; mathematical instruments; encoded cards and cards
bearing machine readable information; identity cards; scientific
equipment; data processing equipment; computers, computer
firmware, hardware and software; hifi systems; remote controls; home
cinema equipment; videotapes; sound recordings; video recordings;
computer accessories in class 9; printers; music players; cameras;
televisions; television apparatus; satellite decoders; DVD players;
optical storage disc players; video players; DVD recorders, optical
storage disc recorders, video recorders; camcorders; radios;
telephone apparatus; mobile telephones; information in electronic
form; spectacles; sun glasses; contact lenses; electric door bells;
glasses cases; fire extinguishers; fire blankets; battery chargers;
satellite navigation equipment; electric and electrical antitheft devices;
measuring instruments; films; cameras, video cameras, projectors;
holders for cassettes, videos, DVDs, optical storage discs or other
sound recordings; mp3 players, mp3 or mp4 recorders; players or
recorders for electronic or digital media; covers, cases, docking
stations, holders or headphones for telecommunication apparatus, for
multimedia apparatus or for multimedia players or recorders;
accessories for telecommunication or multimedia players or recorders;
telescopes, binoculars; scales; bathroom scales; food or drink scales;
electric locks; cabinets for loudspeakers; cabinets for audio, visual or
audio visual equipment; burglar alarms; burglar surveillance
equipment; electrical measuring apparatus for decorating, media
storage units; cases and cabinets for DVDs, CDs, videos tapes; digital
receiver boxes; satellite dishes; digital radios; headphones; fire
blankets; clothing for protection against accidents, irradiation and fire;
electrical tyre pressure machines; cases and carriers adapted for
carrying multimedia apparatus, DVDs, CDs, video tapes, electronic
games; carrying cases for computers, video apparatus,
cinematographic apparatus and optical apparatus, bags adopted for
laptops; hand held multimedia devices; batteries; compasses; parts
and fittings for all the aforesaid goods; electronic tracking devices;
electrical adaptors for travel; electrical adaptors; electronic currency
conversion apparatus; electric ceiling roses; geometry sets;
downloadable audio and video recordings featuring music, comedy,
drama, action, adventure and/or animation; digital music
downloadable from the Internet; downloadable telephone ring tones;
downloadable audiobooks; downloadable publications; computer
software for use in the delivery, distribution and transmission of digital
music and entertainment-related audio, video, text and multimedia
content; computer programs for use in streaming or downloading
music, film, TV programs, audio books and games.
Class 10: Surgical, medical, dental, and veterinary apparatus and instruments;
condoms; breast pumps; surgical stockings; hearing aids; teething
Decision on Opposition No B 2 514 480 page: 12 of 22
rings; orthopaedic articles; suture materials; electrical and electronic
therapeutic apparatus and instruments; electrical and electronic
muscle stimulation apparatus and instruments; microcurrent apparatus
for face and body; ear plugs.
Class 11: Apparatus for lighting, heating or cooking; lamp shades; beverage
cooling apparatus, bicycle lights, coffee machines, coffee percolators,
tea machines; gas lighters, kettles, lamps, light bulbs, torches;
refrigerators; freezers; fans; toasters; roasters; bread makers;
hairdryers; steam facial apparatus; sterilizers; water softening
apparatus; air deodorising apparatus; air-conditioning apparatus; solar
water heaters; water purifying apparatus; gas water heaters (for
household use); ice-cooling refrigerators (for household purposes);
household tap-water filters; bathtubs, showers and sinks; waste water
treatment tanks for household purposes; light bulbs; hot water bottles;
humidifiers, sinks; bread making machines; electric sun beds.
Class 12: Trolleys; automotive parts in class 12; baby carriages; pushchairs,
prams; bicycles; bicycle parts, bicycle bells; tricycles.
Class 13: Fireworks.
Class 14: Watches and clocks; jewellery; badges; key rings; key blanks and key
chains as jewellery [trinkets or fobs], cuff links and tie pins; precious
stones; horological and chronometric instruments; watch straps; watch
chains; cases for watches; ornaments.
Class 15: Musical instruments; keyboards; music stands.
Class 16: Paper, printed matter and publications, brochures; printed plastic
cards; stationery; pens, pencils, rulers, staplers and staples,
adhesives and adhesive tape, paint boxes, all included in class 16;
books, stationery, office requisites (other than furniture), chalks,
chalkboards and modelling clay; printed; stationery; decalcomanias;
diaries; calendars; journals; paper, card, cardboard; place cards, menu
cards, directional cards; books; almanacs; signs; photographs;
collector cards; stickers; address books; organisers; writing pads and
blocks; manuals; plans; charts; posters; rulers; writing implements;
plastic bags; wrapping materials; gift wrap, gift bags; instructional and
teaching materials; directories; handbooks; coasters; artists material;
drawing instruments and implements; ink pads; papers towels;
drawing pins; map; microwave cooking bags; modelling materials;
table linen of paper; table mats of paper; markers; pastel caryons,
colouring pens, colour pencils; pencils; erasers; pencil cases; ring-
binders; spiral notebooks; notebooks; book covers; bookmarks; writing
paper; envelopes; note cards; greeting cards; post-cards; note pads;
memo pads; albums; office requisites; prints; paper napkins; toilet
paper; tissues; writing sets; geometric sets, plastic film for wrapping;
vouchers, tickets, erasers; adhesives for domestic use.
Class 17: Garden hoses; insulating materials; high pressure hoses.
Class 18: Umbrellas, parasols and walking sticks, saddlery; luggage, travelling
bags and cases; wallets and purses; bags; sports bags; holdalls;
Decision on Opposition No B 2 514 480 page: 13 of 22
handbags; briefcases; satchels; wash bags; vanity cases; leather key
cases; music cases.
Class 19: Garden ornaments; garden sheds; softwood chips for use on gardens;
gazebo (non-metal structures); garden sheds; greenhouses having
non-metallic frames; building materials [non-metallic]; roses [ceiling
decorations] of non-metallic materials; roller blinds made of wood or of
non-textile plastics materials.
Class 20: Containers made wholly or principally of plastic materials; wicker
baskets, wickerwork; coat-hangers; mats for sinks; curtain rails,
shelves, shelving and furniture; indoor slatted blinds, venetian blinds;
sleeping bags; mirrors; picture frames; cushions; cots; toy chests; bins
of wood or plastic; boxes of wood or plastic; workbenches; Portable
boxes [containers] of plastic, containers, not of metal [storage,
transport]; parts and fittings included in class 20 for all the aforesaid
goods.
Class 21: Small domestic utensils and containers (none of precious metal or
coated therewith); combs, sponges (not for surgical purposes);
materials included in class 21 for cleaning purposes; steel wool;
brushes, brooms; ironing boards; ironing board covers; rubber gloves;
glassware, porcelain and earthenware, clothes-pegs; household or
kitchen utensils and containers (not of precious metal or coated
therewith); brush-making materials; toilet brushes; articles for cleaning
purposes; unworked or semi-worked glass (except glass used in
building); glassware, porcelain and earthenware not included in other
classes; cups of paper or plastic; paper plates; plates, eggcups; bowls;
cups; mugs, tea set, tea pots, dishes, jugs, dinner sets; rubbish bins;
frying pans, saucepans; nail brushes; cosmetic applicators; dusters;
cleaning clothes; candlesticks; kitchen tools; trays for domestic
purposes; towel dispensers; straws for drinking; pegs.
Class 22: Awnings and canopies; hammocks; tents; ropes, string, nets.
Class 24: Textiles and textile goods, not included in other classes, bed and table
covers; household textile articles; table linen, bed linen, bath linen;
bed blankets; quilts, bed covers, bed sheets, pillow cases, crib
bumpers, comforters; curtains, draperies; towels, washcloths, place
mats; wall hangings.
Class 25: Articles of clothing, footwear and headgear; nightwear, sportswear,
swimwear, underwear.
Class 26: Artificial flowers; lace and embroidery, ribbons and braid; buttons,
hooks and eyes, pins and needles; hair accessories, hair slides, hair
clips and ribbons.
Class 27: Carpets, rugs, mats and matting, linoleum and other materials for
covering existing floors; wall hangings (non-textile); door mats.
Class 28: Games and playthings; toys; gymnastic and sporting articles not
included in the other classes; decorations for christmas trees; artificial
christmas trees; christmas tree stands; ornaments and decorations
(other than candles or lamps), all for christmas trees; kits of parts [sold
Decision on Opposition No B 2 514 480 page: 14 of 22
complete] for the making toy model cars, construction models and toy
models; gymnastic and sporting articles (other than clothing); weights,
body building apparatus; billiard tables; tennis tables; roller skates;
novelties for parties; paddling pools (not structures); dolls; kites; darts;
dart boards; ice skates; balloons, exercise equipment, golf balls, golf
clubs, golf bags; fishing rods and fishing equipment; electronic games;
electrical or electronic amusement apparatus; swim floats.
Class 29: Meat, fish, poultry and game; meat extracts; prepared, preserved,
dried or cooked fruits and vegetables; jellies, jams, fruit sauces; eggs,
milk and milk products; edible oils and fats; seafood and seafood
products; prepared, jellies, preserves, jams, compotes, salads,
cooking oils; pickles; dried herbs; meat extracts and meat products;
poultry products; potato-based snack foods; potato chips, potato
crisps, potato fritters; soups; vegetable juices; snack foods in class 29;
dips in class 29; soups; spreads in class 29; prepared meals in class
29; constituents for meals in class 29; desserts based on dairy
products; dips.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and
preparations made from cereals, bread, pastry and confectionary, ices,
honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces
(condiments); spices; ice; coffee, tea, cocoa, chocolate and tea based
beverages; pasta, popcorn; cereal, muesli; rice, tapioca, sago; sugar,
artificial coffee; flour and preparations made from cereals; bread,
pastry confectionery, pies, frozen confectionery, sorbets, ices, ice;
honey, treacle; yeast, baking-powder; salt, mustard; mayonnaise,
vinegar, sauces (condiments); spices, pasta, noodles, couscous,
tortillas, barley, bean meal, spring rolls, waffles; farinaceous foods and
food pastes; crackers, rice cakes, biscuits, snack-foods; cakes,
decorations for cakes, marzipan, pralines, popcorn, custard; meat
gravies; pies, quiches, pizza; pizza bases, sauces for pizzas;
essences for foodstuffs; glucose, gluten, chewing gum; spreads in
class 30; prepared meals in class 30; constituents for meals in
class30; salad dressings; sandwiches; desserts in class 30.
Class 31: Agricultural, horticultural and forestry products and grains not included
in other classes; live animals; fresh fruits, vegetables and nuts; seeds,
natural plants and flowers; foodstuffs for animals, malt; vegetables;
seeds, natural plants and flowers; foodstuffs for animals; malt; fresh
garden herbs, seeds, malt, agricultural, horticultural and forestry
products and grains not included in other classes, natural plants and
flowers, malts, foodstuffs for animals; animal litter.
Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit
drinks and fruit juices; syrups and other preparations for making
beverages; fruit drinks and fruit juices; syrups and other preparations
for making beverages; the aforesaid goods also sold as gift sets and
hampers; flavourings for beverages.
Class 33: Alcoholic beverages (except beers).
Class 34: Tobacco; cigarettes; smokers’ articles; matches.
Decision on Opposition No B 2 514 480 page: 15 of 22
Class 35: Advertising and promotional services; direct mail advertising; business
organisation, operational management and supervision of sales and
promotional incentive schemes; information, advice and assistance
relating to any such schemes; retail services connected with the sale
of paints and washes, decorating goods, namely, dust sheets, paint
brushes, paint trays, paint rollers, wallpaper and sandpaper, cleaning
articles and goods, oils, candles, vehicle maintenance and repair
goods, pharmaceutical, veterinary or sanitary preparations and
substances, pet care goods, namely, collars, leads and animal
bedding, domestic machines, hand tools, cutlery, knives, computers,
signalling goods, televisions, audio visual equipment, batteries,
electrical vehicles, audio visual media and goods, telephones,
telecommunication equipment, anti-theft devices, scales, sports
equipment, gym equipment, exercise equipment, nutritional products
for healthcare, food products for healthcare, first aid products for the
home, lighting products, locks, security articles, gardening products,
namely, garden tools (hand operated), gardening gloves, lawnmowers,
strimmers and hedge trimmers, flowers, plants, trees, prams,
pushchairs, clocks, horological items, jewellery, crockery, kitchen
accessories, namely, kettles, toasters and electric cooking utensils,
printed matter, stationery, artists’ goods, gift cards and gift wrap, bags
of all kinds, umbrellas, building materials, camping articles and goods,
namely, tents, awnings, ground sheets and camping stoves, travel
goods, namely, suitcases, travelling bags, handbags, rucksacks,
holdalls, purses, wallets and luggage, clothing goods, toys and games
and playthings, foodstuffs for animals birds or fish, horticultural or
forestry products, seeds, trees, gardening tools, curtains, bathroom
fittings, furniture, exercise equipment, household cleaning equipment,
household decorating equipment, household care equipment,
household bedding goods, household decorations and ornaments, soft
furnishings and textiles for the home, household goods, namely,
household or kitchen utensils and containers, glassware, porcelain
and earthenware, beer mugs, bottles, cooking pots, corkscrews, cups,
egg cups, dishes, drinking glasses, flasks, storage jars, ice-cube trays,
mugs, plates, saucers, crockery, bins, soap boxes and water bottles,
foods, drinks, electric cables, batteries, magnetic tapes and cassettes,
videos, CDs, DVDs, optical and magneto-optical discs, CD-ROMs,
electronic games, software games, mathematical instruments,
encoded cards and cards bearing machine readable information,
identity cards, scientific equipment, data processing equipment,
computers, computer firmware, hardware and software, hifi systems,
remote controls, home cinema equipment, videotapes, sound
recordings, video recordings, computer accessories, printers, music
players, cameras, televisions, television apparatus, satellite decoders,
DVD players, optical storage disc players, video players, DVD
recorders, video recorders, camcorders, radios, telephone apparatus,
mobile telephones, information in electronic form, spectacles, sun
glasses, contact lenses, electric door bells, glasses cases, fire
extinguishers, fire blankets, electric irons, ear plugs, battery chargers,
satellite navigation equipment, electric and electrical antitheft devices,
measuring instruments, films, cameras, video cameras, projectors,
holders for cassettes, videos, DVDs, or other sound recordings, mp3
players, mp3 or mp4 recorders, players or recorders for electronic or
digital media, covers, cases, docking stations, holders or headphones
for telecommunication apparatus, for multimedia apparatus or for
Decision on Opposition No B 2 514 480 page: 16 of 22
multimedia players or recorders, accessories for telecommunication or
multimedia players or recorders, telescopes, binoculars, ear plugs,
electric irons, electric hair curling equipment, electric hair preparations,
treatment or styling equipment, electric irons, electric steam irons,
electric razors, electric sun beds, scales, bathroom scales, food or
drink scales, electric locks, cabinets for loudspeakers, cabinets for
audio, visual or audio visual equipment, burglar alarms, burglar
surveillance equipment, power tools, electrical decorating equipment,
media storage units, cases and cabinets for DVDs, optical and
magneto-optical discs, CDs, videos tapes, electrical or electronic
amusement apparatus, digital receiver boxes, satellite dishes, digital
radios, headphones, fire blankets, protective clothing, electrical tyre
pressure machines, cases and carriers, hand held multimedia devices,
batteries, compasses, parts and fittings for all the aforesaid goods,
electronic tracking devices.
Class 36: Financial services; financial affairs; monetary affairs; insurance;
insurance services; vehicle insurance services; real estate affairs;
issuance of credit and debit cards; credit, debit and charge card
services; discount card services; automated payment services; issue
and redemption of tokens and vouchers; issuing of tokens and
vouchers of value in relation to customer loyalty schemes; financial
services relating to the provision of vouchers for the purchase of
goods; banking services; mortgage services; credit services; mortgage
protection services; loan services; income protection services; life
assurance services; disability assurance services; information,
advisory and consultancy services relating to the aforementioned
services.
Class 37: Car wash, dry cleaning, vehicle cleaning service stations; plumbing
services; installation, repair, maintenance and servicing of domestic
appliances, installations of equipment, namely brown goods, white
goods and central heating systems including boilers; installation,
repair and maintenance of of gas cylinders, gas turbines, gas water
heaters, oil burners, electric appliances; installation of oil production
apparatus; repair and maintenance of gas supply systems; electric
installation services; installation, repair and maintenance of gas, oil,
electricity or water meters; installation of insulating materials.
Class 38: Telecommunication, mobile and fixed telecommunication, and satellite,
cellular, and radio communication services; transmission, delivery and
reception of sound, data and images; provision of Internet access
services.
Class 39: Transportation and delivery of goods and merchandise; storage of
goods and merchandise; tracking services relating to transportation
and delivery of goods and merchandise; packaging of goods and
arranging the collection of goods; gas and electric supply services;
route planning and vehicle recovery services; gift wrapping services.
Class 40: Clothing alteration services.
Class 41: Entertainment, namely, providing downloadable music, comedy,
drama, action, adventure and/or animation to users online;
educational and training services, publishing services, entertainment
Decision on Opposition No B 2 514 480 page: 17 of 22
services; arranging and conducting of conferences, seminars,
workshops; education in driving techniques, mechanics, map reading,
safety and environmental matters; driving academy services;
arranging and organisation of competitions; arranging and
organisation of sport competitions; organisation of exhibitions;
provision of training facilities; holiday camp services; sport camp
services; instruction services; off road driving courses; driver training
and tuition; defensive driving courses; practical training and
demonstration services; driver demonstrations; teaching of vehicles
self-recovery methods; rental of teaching instruments, audio and video
equipment, radios and televisions, game machines and apparatus;
corporate entertainment; production of shows; education and
entertainment relating to cultural activities; arranging, organisation and
timing of sports events; education services and instruction services in
relation to nutrition [not medical].
Class 43: Restaurant services; bar, public house and restaurant services;
providing food and drink; catering services; cafes, cafeterias,
canteens, snack-bars; preparation of meals for consumption on or off
the premises; cocktail lounge services; hotel and motel services;
crèche services; advice, information and franchising consultancy
services relating to all the aforesaid services.
Class 44: Pharmacy advice; provision of information and advice relating to
nutrition; medical clinic services.
Preliminary remark
The parties comment on the scope of protection of the earlier mark as far as
‘supermarket services’ in Class 39 are concerned. According to the applicant since
these services are classified in Class 39 they should be interpreted as relating to
‘transport, packaging and storage of goods for supermarkets’. According to the
opponent, it was not possible to get protection for retail and wholesale services under
the wording of the Nice Classification in force at the time of filing the application and
the best place for services relating to the commercial activities of a supermarket was
in Class 39.
The Opposition Division notes first of all that the Nice Classification serves only
administrative purposes. It changes during the years in order to better reflect the
market reality. Therefore, the scope of protection of the opponent’s services should
be determined by taking into account the literal and natural meaning of the services
bearing in mind the edition of the Nice Classification in force at the time of filing the
application (the V. edition) and not its current edition/version.
Indeed the V. edition of the Nice Classification did not explicitly include retail or
supermarket services. Moreover, according to the explanatory notes regarding
Class 35 (where retail services are nowadays classified) activity of an enterprise the
primary function of which was the sale of goods was explicitly excluded. Therefore,
supermarket services had necessarily to be applied for registration in a different class
such as Class 39 which does not mean that they have to be interpreted with view to
this class’ heading and not according to their natural meaning. Therefore, the
services for which the earlier mark enjoys protection are supermarket services as
such and not transport, packaging and storage of goods for supermarkets as the
applicant claims. As far as their nature is concerned supermarket services can be
defined as the bringing together for the benefit of others of a variety of consumer
Decision on Opposition No B 2 514 480 page: 18 of 22
goods, mainly foodstuff (in the broadest sense, including also beverages) and
household supplies enabling customers to conveniently view and purchase those
goods.
Comparison
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.
The applicant’s services in Class 35 related to retail services, namely: retail services
connected with the sale of paints and washes, decorating goods, namely, dust
sheets, paint brushes, paint trays, paint rollers, wallpaper and sandpaper, cleaning
articles and goods, oils, candles, vehicle maintenance and repair goods,
pharmaceutical, veterinary or sanitary preparations and substances, pet care goods,
namely, collars, leads and animal bedding, domestic machines, hand tools, cutlery,
knives, computers, signalling goods, televisions, audio visual equipment, batteries,
electrical vehicles, audio visual media and goods, telephones, telecommunication
equipment, anti-theft devices, scales, sports equipment, gym equipment, exercise
equipment, nutritional products for healthcare, food products for healthcare, first aid
products for the home, lighting products, locks, security articles, gardening products,
namely, garden tools (hand operated), gardening gloves, lawnmowers, strimmers
and hedge trimmers, flowers, plants, trees, prams, pushchairs, clocks, horological
items, jewellery, crockery, kitchen accessories, namely, kettles, toasters and electric
cooking utensils, printed matter, stationery, artists’ goods, gift cards and gift wrap,
bags of all kinds, umbrellas, building materials, camping articles and goods, namely,
tents, awnings, ground sheets and camping stoves, travel goods, namely, suitcases,
travelling bags, handbags, rucksacks, holdalls, purses, wallets and luggage, clothing
goods, toys and games and playthings, foodstuffs for animals birds or fish,
horticultural or forestry products, seeds, trees, gardening tools, curtains, bathroom
fittings, furniture, exercise equipment, household cleaning equipment, household
decorating equipment, household care equipment, household bedding goods,
household decorations and ornaments, soft furnishings and textiles for the home,
household goods, namely, household or kitchen utensils and containers, glassware,
porcelain and earthenware, beer mugs, bottles, cooking pots, corkscrews, cups, egg
cups, dishes, drinking glasses, flasks, storage jars, ice-cube trays, mugs, plates,
saucers, crockery, bins, soap boxes and water bottles, foods, drinks, electric cables,
batteries, magnetic tapes and cassettes, videos, CDs, DVDs, optical and magneto-
optical discs, CD-ROMs, electronic games, software games, mathematical
instruments, encoded cards and cards bearing machine readable information,
identity cards, scientific equipment, data processing equipment, computers,
computer firmware, hardware and software, hifi systems, remote controls, home
cinema equipment, videotapes, sound recordings, video recordings, computer
accessories, printers, music players, cameras, televisions, television apparatus,
satellite decoders, DVD players, optical storage disc players, video players, DVD
recorders, video recorders, camcorders, radios, telephone apparatus, mobile
telephones, information in electronic form, spectacles, sun glasses, contact lenses,
electric door bells, glasses cases, fire extinguishers, fire blankets, electric irons, ear
plugs, battery chargers, satellite navigation equipment, electric and electrical antitheft
devices, measuring instruments, films, cameras, video cameras, projectors, holders
for cassettes, videos, DVDs, or other sound recordings, mp3 players, mp3 or mp4
recorders, players or recorders for electronic or digital media, covers, cases, docking
stations, holders or headphones for telecommunication apparatus, for multimedia
apparatus or for multimedia players or recorders, accessories for telecommunication
Decision on Opposition No B 2 514 480 page: 19 of 22
or multimedia players or recorders, telescopes, binoculars, ear plugs, electric irons,
electric hair curling equipment, electric hair preparations, treatment or styling
equipment, electric irons, electric steam irons, electric razors, electric sun beds,
scales, bathroom scales, food or drink scales, electric locks, cabinets for
loudspeakers, cabinets for audio, visual or audio visual equipment, burglar alarms,
burglar surveillance equipment, power tools, electrical decorating equipment, media
storage units, cases and cabinets for DVDs, optical and magneto-optical discs, CDs,
videos tapes, electrical or electronic amusement apparatus, digital receiver boxes,
satellite dishes, digital radios, headphones, fire blankets, protective clothing,
electrical tyre pressure machines, cases and carriers, hand held multimedia devices,
batteries, compasses, parts and fittings for all the aforesaid goods, electronic
tracking devices are at least similar to a low degree to the opponent’s ‘supermarket
services’ as their nature and purpose can be considered the same. All other services
in the specification of the applicant, including the remaining services in Class 35 are
dissimilar to the opponent’s services, as they do not have any criteria in common
which can give rise to a level of similarity.
As far as the contested goods are concerned it is to be noted that retail services in
general are not similar to any goods that are capable of being sold by retail. Apart
from being different in nature, given that services are intangible whereas goods are
tangible, they serve different needs. Furthermore, the method of use of those goods
and services is different. They are neither in competition with, nor necessarily
complementary to, each other. Therefore, all the contested goods are dissimilar to
the opponent’s services.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the services found to be similar are directed at the public at
large. The degree of attention is normal.
c) The signs
NETTO SUPERMERCADOS
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).
Decision on Opposition No B 2 514 480 page: 20 of 22
The earlier mark is a word mark comprising the elements ‘NETTO’ and
‘SUPERMERCADOS’. The contested sign is a figurative mark comprising the verbal
element ‘Netto’ (represented in a rather standard but heavily bold typescript) and a
stylised presentation of a dog holding a basket. Both marks have no elements that
can be considered dominant (visually more eye-catching) than other elements.
The element ‘SUPERMERCADOS’ of the earlier mark in relation to ‘supermarket
services’ is non-distinctive. The verbal element ‘Netto’ contained in both marks does
not have a meaning in Spanish. It is also to be noted that the doubled letter ‘T’ is very
uncommon for the Spanish language in general and is as such rather striking and
attracts the consumer’s attention. The dog holding a basket will be perceived with the
meaning it represents by the relevant consumer. Its distinctiveness should be seen
as normal.
When signs consist of both verbal and figurative components, in principle, the verbal
component of the sign usually has a stronger impact on the consumer than the
figurative component. This is because the public does not tend to analyse signs and
will more easily refer to the signs in question by their verbal element than by
describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace,
EU:T:2005:289, § 37).
Visually, the signs coincide in ‘Netto’. They differ in ‘SUPERMERCADOS’ of the
earlier and visually also in the figurative elements of the contested sign (the
stylisation of the verbal element and the design of a dog holding a basket). Bearing in
mind the non-distinctive character of the verbal element ‘SUPERMERCADOS’ the
signs are visually similar to an average degree?.
Aurally, the signs coincide in ‘Netto’. They differ in ‘SUPERMERCADOS’ of the
earlier sign. Bearing in mind the non-distinctive character of the verbal element
‘SUPERMERCADOS’ the signs are aurally highly similar.
Conceptually, although the verbal element ‘SUPERMERCADOS’ will evoke a
concept, this element is non-distinctive and cannot indicate the commercial origin.
Bearing in mind that the verbal element ‘Netto’ has no meaning for the Spanish
consumer no particular concept can be attributed to the earlier mark as a whole. The
contested sign will clearly be perceived with the concept of a dog holding a basket.
Since one of the signs (the earlier mark) will not be associated with a concept with
trade mark significance the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the services in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
Decision on Opposition No B 2 514 480 page: 21 of 22
normal, despite the presence of a non-distinctive element in the mark, as stated
above in section c) of this decision.
e) Global assessment, other arguments and conclusion
Account is taken of the fact that average consumers rarely have the chance to make
a direct comparison between different marks, but must trust in their imperfect
recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323,
§ 26).
Evaluating likelihood of confusion implies some interdependence between the
relevant factors and, in particular, a similarity between the marks and between the
goods or services. Therefore, a lesser degree of similarity between goods and
services may be offset by a greater degree of similarity between the marks and vice
versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Some of the contested services are similar to the opponent’s services. The rest of the
contested services and all the contested goods have been found dissimilar to the
opponent’s services.
The signs are visually similar to an average and aurally similar to a high degree on
behalf of the common verbal element ‘NETTO’. The earlier mark is of average
distinctiveness and the level of attention of the relevant consumer is average.
Taking into account the above, in particular the similarity between the signs and the
conflicting services the Opposition Division finds that there is a likelihood of confusion
on the part of the Spanish public and therefore the opposition is partly well founded
on the basis of the opponent’s Spanish trade mark registration.
The applicant refers to Case-Law which it considers relevant to the case at hand in
the sense that it supports the arguments of the applicant supporting the conclusion
that there is no likelihood of confusion between the conflicting signs.
it must be noted that the Office is not bound by its previous decisions as each case
has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court which stated that it is
settled case-law that the legality of decisions is to be assessed purely by reference to
the CTMR, and not the Office’s practice in earlier decisions (judgment of 30/06/2004,
T-281/02, ‘Mehr für Ihr Geld’).
Even though previous decisions of the Office are not binding, their reasoning and
outcome should still be duly considered when deciding upon a particular case.
The Opposition Division duly considered the decisions referred to by the applicant
and does not find them relevant to the case at hand, which particularities cannot be
compared to the particularities of the previous cases. First of all, the signs under
comparison in the cited decisions are completely different as can be seen in the
applicant’s submissions. Second, the particularities of the factual background of
these other decisions and the findings of the Opposition Division and the Boards with
regard to the distinctive character in relation to the goods covered by the marks are
quite different. All in all, the decisions referred to by the applicant are of no relevance
for the current case.
Decision on Opposition No B 2 514 480 page: 22 of 22
The rest of the contested goods and services are dissimilar. As similarity of goods
and services is a necessary condition for the application of Article 8(1) EUTMR, the
opposition based on this Article and directed at these goods and services cannot be
successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods 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
Denitza STOYANOVA-
VALCHANOVA
Plamen IVANOV André Gerd Günther
BOSSE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.