OPPOSITION No B 2 703 497

M/S. Indeutsch International, Plot No. 42, Noida Special Economic Zone, Noida, Uttar Pradesh 201305, India (opponent), represented by Dolleymores, 9, Rickmansworth Road, Watford, Hertfordshire WD18 0JU, United Kingdom (professional representative)

a g a i n s t

Madeira Garne U. + M. Schmidt & Co. GmbH, Hans-Bunte-Str. 8, 79108 Freiburg, Germany (applicant), represented by Rolf Kirchhoff, Madeira Garnfabrik Rudolf Schmidt KG, Zinkmattenstr. 38, 79108 Freiburg, Germany (employee representative).

On 26/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 703 497 is upheld for all the contested goods.

2.        European Union trade mark application No 15 099 922 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 099 922. The opposition is based on European Union trade mark registration No 8 454 068. The opponent invoked Article 8(1)(a) and (b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

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

Class 24:        Saris; sarees.

Class 26:        Lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins, needles, artificial flowers, brooches, bands, zip fastener, elastic tapes, cotton tapes, cotton straps, badges, braces, buckles, clothing accessories, eye leads, cords for clothing frills, sarees falls, braid eyes, pins, snap fasteners and trimmings.

The contested goods are the following:

Class 16:        Decoration and art materials and media.

Class 23:        Yarns and threads.

Class 26:        Accessories for apparel, sewing articles and decorative textile articles.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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 goods in Class 16

The contested decoration and art materials and media include a range of hobby materials for decorating and embellishing objects, for example craft paper, modelling materials, paper bows, ribbons and garlands. The opponent’s ribbons, buttons, artificial flowers, badges in Class 26 are used mainly in the making of products belonging to other classes, for example clothes in Class 25; however, it is not uncommon to use such goods as decorating materials in scrapbooking and for other hobbies. They have the same producers, target the same public of crafting enthusiasts and have the same distribution channels, for example hobby craft stores. Therefore, these goods are similar to a low degree.

Contested goods in Class 23

The contested yarns and threads are similar to the opponent’s pins, needles in Class 26. These goods are complementary, have the same distribution channels, for example haberdasheries, hobby craft and sewing stores, and target the same relevant public, for example consumers interested in sewing.

Contested goods in Class 26

The contested accessories for apparel include, as a broader category, the opponent’s brooches. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested sewing articles include, as a broader category, the opponent’s pins, needles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested decorative textile articles include, as a broader category, the opponent’s lace and embroidery. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. The signs

SPECTRA	SPECTRA
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and some of the contested goods are identical to those on which the opposition is based, namely:

Class 26:        Accessories for apparel, sewing articles and decorative textile articles

Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.

The rest of the contested goods are similar to an average or low degree to those covered by the earlier mark, namely:

Class 16:        Decoration and art materials and media.

Class 23:        Yarns and threads.

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).

Given that the identity between the signs offsets the low and average degree of similarity between the goods, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 454 068. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Solveiga BIEZA

Jorge ZARAGOZA GOMEZ

Martin EBERL

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.