OPPOSITION DIVISION
OPPOSITION No B 2 838 228
eos.uptrade GmbH, Schanzenstr. 70, 20357 Hamburg, Germany (opponent),
represented by Florian König, Dienerreihe 2, 20457 Hamburg, Germany
(professional representative)
a g a i n s t
Tickos Home Decor Co.,Ltd, Suite 108 Chase Business Centre 39-41 Chase Side,
London City of London N14 5BP, United Kingdom (applicant)
On 06/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 838 228 is partially upheld, namely for the following
contested goods:
Class 25: Costumes; Costumes (Masquerade -); Masquerade costumes;
Theatrical costumes; Halloween costumes; Dance costumes; Folk costumes;
Costumes for use in role-playing games; Costumes for use in children’s dress
up play; Dance slippers; Ballet slippers.
2. European Union trade mark application No 16 070 849 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 of European Union trade mark
application No 16 070 849 ‘Tickos’ (word mark), namely against all the goods in
Classes 25 and 28. The opposition is based on European Union trade mark
registration No 11 835 295 ‘TICKeos’ (word mark). The opponent invoked Article 8(1)
(b) and Article 8(5) EUTMR.
Decision on Opposition No B 2 838 228 page: 2 of 12
I. REPUTATION — ARTICLE 8(5) EUTMR – SUBSTANTIATION
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered
earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade
mark will not be registered where it is identical with, or similar to, an earlier trade
mark, irrespective of whether the goods or services for which it is applied are
identical with, similar to or not similar to those for which the earlier trade mark is
registered, where, in the case of an earlier European Union trade mark, the trade
mark has a reputation in the Union or, in the case of an earlier national trade mark,
the trade mark has a reputation in the Member State concerned and where the use
without due cause of the contested trade mark would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier trade mark.
According to Article 95(1) EUTMR, in proceedings before it the Office will examine
the facts of its own motion; however, in proceedings relating to relative grounds for
refusal of registration, the Office will be restricted in this examination to the facts,
evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the
opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to present the facts, evidence and arguments in support of its opposition
or to complete any facts, evidence or arguments that have already been submitted
together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR (in the version in force at the time of
commencement of the adversarial part), when the opposition is based on a mark with
reputation within the meaning of Article 8(5) EUTMR, the opposing party must
provide evidence showing, inter alia, that the mark has a reputation, as well as
evidence or arguments showing that use without due cause of the contested trade
mark would take unfair advantage of, or be detrimental to, the distinctive character or
the repute of the earlier trade mark.
In the present case, the notice of opposition was not accompanied by any evidence
(such as market surveys or other documents that show that there is a high degree of
trade mark awareness amongst the relevant public) of the alleged reputation of the
earlier trade mark.
On 03/03/2017 the opponent was given two months, commencing after the end of the
cooling-off period, to submit the abovementioned material. This time limit expired on
08/07/2017, which was a Saturday and extended, therefore, to Monday 10/07/2017.
The opponent’s observations were filed on 11/07/2017 and 08/08/2017 in German.
According to Rule 19(4) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will not take into account written
submissions or documents, or parts thereof, that have not been submitted in or that
have not been translated into the language of the proceedings, within the time limit
set by the Office. No translations into the language of the proceedings, namely,
English, had been filed within one month from the date of the submission of the
original document (Article 146(9) EUTMR, former Rule 96(1) EUTMIR, in force before
01/10/2017).
Decision on Opposition No B 2 838 228 page: 3 of 12
For the above reasons, the opponent’s abovementioned observations cannot be
taken into account in the proceedings.
The opponent did not submit any evidence concerning the reputation of the trade
mark on which the opposition is based.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the
opposition must be rejected as unfounded insofar as this ground is concerned.
II. 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 goods and services on which the opposition is based are the following:
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); Printers’ type; Printing blocks; Garbage bags of paper or of plastics;
Napkins of paper for removing make-up; Decalcomanias; Address plates for
addressing machines; Address stamps; Addressing machines; Folders for papers;
Document files [stationery]; Albums; Almanacs; Moisteners [office requisites];
Announcement cards [stationery]; Document laminators for office use; Aquarelles;
Architects’ models; Calculating tables; Wristbands for the retention of writing
instruments; Atlases; Stickers [stationery]; Money clips; Moisteners for gummed
surfaces [office requisites]; Cabinets for stationery [office requisites]; Mats for beer
glasses; Pictures; Paintings [pictures], framed or unframed; Biological samples for
use in microscopy [teaching materials]; Plans; Pencils; Pencil holders; Pencil leads;
Pencil sharpeners, electric or non-electric; Pencil sharpening machines, electric or
non-electric; Pads [stationery]; Booklets; Paperweights; Letter trays; Postage
stamps; Writing paper; Pamphlets; Bookbinding material; Bookbinding cords;
Bookbinding apparatus and machines [office equipment]; Bookbinding cloth; Fabrics
for bookbinding; Bookbindings; Books; Bookends; Office requisites, except furniture;
Clips for offices; Comic books; Diagrams; Document holders [stationery]; Printed
matter; Printers’ reglets; Electrotypes; Printing blocks; Inking sheets for document
reproducing machines; Inking sheets for duplicators; Printers’ blankets, not of textile;
Printing type; Letters [type]; Covers [stationery]; Tickets; Labels, not of textile; Stencil
cases; Flags of paper; Folders [stationery]; Binding strips [bookbinding]; Inking
ribbons; Inking ribbons for computer printers; Typewriter ribbons; Spools for inking
ribbons; Chromos; Artists’ watercolor saucers; Paint boxes [articles for use in school];
Paint trays; Penholders; Pen clips; Pen cases; Pens [office requisites]; Pen wipers;
Humidity control sheets of paper or plastic for foodstuff packaging; Figurines
Decision on Opposition No B 2 838 228 page: 4 of 12
[statuettes] of papier mâché; Filter paper; Finger-stalls [office requisites]; Isinglass for
stationery or household purposes; Bottle envelopes of cardboard or paper; Bottle
wrappers of cardboard or paper; Correcting fluids [office requisites]; Flyers; Plastic
film for wrapping; Sheets of reclaimed cellulose for wrapping; Molds for modelling
clays [artists’ materials]; Forms, printed; Photographs [printed]; Photo-engravings;
Postage meters for office use; Fountain pens; Trays for sorting and counting money;
Geographical maps; Song books; Terrestrial globes; Greeting cards; Graphic
representations; Graphic reproductions; Etching needles; Engraving plates;
Engravings; Gums [adhesives] for stationery or household purposes; Elastic bands
for offices; Gummed tape [stationery]; Gummed cloth for stationery purposes; Stands
for pens and pencils; Handbooks [manuals]; Hand labelling appliances; Hand-rests
for painters; Stapling presses [office requisites]; Hectographs; Histological sections
for teaching purposes; Wood pulp paper; Wood pulp board [stationery]; Envelopes
[stationery]; Hat boxes of cardboard; Paper coffee filters; Calendars; Coasters of
paper; Index cards [stationery]; Cards; Tags for index cards; Cardboard tubes;
Catalogues; Adhesive tapes for stationery or household purposes; Apparatus for
mounting photographs; Gluten [glue] for stationery or household purposes;
Adhesives for stationery or household purposes; Adhesive bands for stationery or
household purposes; Adhesive tape dispensers [office requisites]; Clipboards; Bags
for microwave cooking; Carbon paper; Copying paper [stationery]; Correcting tapes
[office requisites]; Correcting ink [heliography]; Credit card imprinters, non-electric;
Chalk for lithography; Chalk holders; Balls for ball-point pens; French curves; Bibs of
paper; Teaching materials [except apparatus]; Glue for stationery or household
purposes; Bookmarkers; Steel letters; Luminous paper; Lithographs; Lithographic
works of art; Lithographic stones; Office perforators; Perforated cards for Jacquard
looms; Punches [office requisites]; Blotters; Loose-leaf binders; Plastic bubble packs
for wrapping or packaging; Painters’ brushes; Canvas for painting; Palettes for
painters; House painters’ rollers; Paintbrushes; Painters’ easels; Marking chalk;
Marking pens [stationery]; Graining combs; Stencils; Pencil lead holders; Modelling
paste; Modelling materials; Plastics for modelling; Modelling clay; Modelling wax, not
for dental purposes; Musical greeting cards; Note books; Paper-clips; Numbering
apparatus; Oleographs; Files [office requisites]; Pantographs [drawing instruments];
Paper; Electrocardiograph paper; Paper for recording machines; Stationery; Paper
tapes and cards for the recordal of computer programmes; Paper ribbons; Paper
sheets [stationery]; Filtering materials [paper]; Face towels of paper; Towels of paper;
Papier mâché; Flower-pot covers of paper; Paper knives [office requisites]; Paper
bows; Table napkins of paper; Handkerchiefs of paper; Conical paper bags;
Cardboard; Pastels [crayons]; Tracing patterns; Tracing cloth; Tracing paper;
Parchment paper; Seals [stamps]; Posters; Placards of paper or cardboard;
Advertisement boards of paper or cardboard; Plastic cling film, extensible, for
palletization; Place mats of paper; Portraits; Postcards; Prospectuses; Erasing
products; Rubber erasers; Scrapers [erasers] for offices; Erasing shields; Etchings;
Paper for radiograms; Ledgers [books]; Passport holders; Drawing boards; Drawing
pens; Tracing needles for drawing purposes; Thumbtacks; Drawing T-squares;
Chaplets; Newsletters; Indexes; Cream containers of paper; Trading cards other than
for games; Absorbent sheets of paper or plastic for foodstuff packaging; Stencils
[stationery]; Boxes of cardboard or paper; Holders for checkbooks [cheque books];
Slate pencils; Writing slates; Signboards of paper or cardboard; Shields [paper
seals]; Tailors’ chalk; Manifolds [stationery]; Patterns for dressmaking; Patterns for
making clothes; Drawer liners of paper, perfumed or not; Nibs; Nibs of gold;
Inkstands; Writing instruments; Writing or drawing books; Writing chalk; Writing
cases [stationery]; Typewriters, electric or non-electric; Typewriter keys; Rollers for
typewriters; Writing materials; Writing cases [sets]; Writing brushes; Writing pads;
Printed publications; Stencil plates; Handwriting specimens for copying; School
supplies [stationery]; Selfadhesive tapes for stationery or household purposes;
Decision on Opposition No B 2 838 228 page: 5 of 12
Composing frames [printing]; Galley racks [printing]; Sealing wax; Sealing machines
for offices; Sealing compounds for stationery purposes; Sealing wafers; Stamps
[seals]; Silver paper; Steel pens; Photograph stands; Starch paste [adhesive] for
stationery or household purposes; Steatite [tailor’s chalk]; Sealing stamps; Holders
for stamps [seals]; Cases for stamps [seals]; Inking pads; Stamp pads; Stamp
stands; Prints [engravings]; Embroidery designs [patterns]; Ink; Inkwells; Ink stones
[ink reservoirs]; Ink sticks; Tablecloths of paper; Table linen of paper; Toilet paper;
Printing sets, portable [office requisites]; Transparencies [stationery]; Indian inks;
Envelope sealing machines, for offices; Tablemats of paper; Bags [envelopes,
pouches] of paper or plastics, for packaging; Cardboard articles; Packaging material
made of starches; Packing paper; Duplicators; Mimeograph apparatus and
machines; Square rulers; Vignetting apparatus; Viscose sheets for wrapping; Waxed
paper; Blackboards; Composing sticks; Writing board erasers; Xuan paper for
Chinese painting and calligraphy; Drawing materials; Drawing pads; Drawing sets;
Drawing instruments; Charcoal pencils; Drawing rulers; Drawing squares; Graphic
prints; Chart pointers, non-electronic; Printed timetables; Periodicals; Magazines
[periodicals]; Newspapers; Paper shredders for office use; Paper clasps; Numbers
[type]; Cigar bands; Compasses for drawing.
Class 35: Advertising; Business management; Business administration; Office
functions; Updating of advertising material; Cost price analysis; Business inquiries;
Business management and organization consultancy; Business management
consultancy; Personnel management consultancy; Advisory services for business
management; Procurement services for others [purchasing goods and services for
other businesses]; Import-export agencies; Professional business consultancy;
Accounting; Computerized file management; Publicity agencies; Auctioneering;
Transcription; Relocation services for businesses; Retail or wholesale services for
pharmaceutical, veterinary and sanitary preparations and medical supplies; Business
investigations; Compilation of statistics; Business efficiency expert services; Drawing
up of statements of accounts; Tax preparation; Economic forecasting; Commercial
information agencies; Commercial information and advice for consumers [consumer
advice shop]; Invoicing; Television advertising; Photocopying services; Business
management of performing artists; Business management of sports people;
Business management of hotels; Publication of publicity texts; Commercial or
industrial management assistance; Business information; Commercial administration
of the licensing of the goods and services of others; Layout services for advertising
purposes; Payroll preparation; Modelling for advertising or sales promotion;
Marketing; Marketing research; Marketing studies; Opinion polling; Data search in
computer files for others; Business research; Public relations; On-line advertising on
a computer network; Organization of exhibitions for commercial or advertising
purposes; Organization of fashion shows for promotional purposes; Business
organization consultancy; Outsourcing services [business assistance]; Employment
agencies; Personnel recruitment; Psychological testing for the selection of personnel;
Bill-posting; Business management assistance; Presentation of goods on
communication media, for retail purposes; Price comparison services; Production of
advertising films; Radio advertising; News clipping services; Shop window dressing;
Word processing; Typing; Secretarial services; Sponsorship search; Shorthand;
Systemization of information into computer databases; Telephone answering for
unavailable subscribers; Telemarketing services; Organization of trade fairs for
commercial or advertising purposes; Dissemination of advertising matter; Writing of
publicity texts; Sales promotion for others; Office machines and equipment rental;
Rental of photocopying machines; Rental of vending machines; Rental of advertising
space; Publicity material rental; Rental of advertising time on communication media;
Arranging subscriptions to telecommunication services for others; Arranging
newspaper subscriptions for others; Advertising by mail order; Distribution of
Decision on Opposition No B 2 838 228 page: 6 of 12
samples; Direct mail advertising; Document reproduction; Administrative processing
of purchase orders; Demonstration of goods; Advertising; Publicity columns
preparation; Business appraisals; Business auditing; Compilation of information into
computer databases.
Class 38: Information about telecommunication; Television broadcasting; Cable
television broadcasting; Radio broadcasting; Broadcasting of teleshopping
programmes; Providing user access to global computer networks; Providing the
option of making online tickets available online; Providing online forums; Providing
telecommunications connections to a global computer network; Providing access to
computer programs on data networks; Providing access to information on the
Internet; Providing internet chatrooms; Providing telecommunication channels for
teleshopping services; Wire service; Wireless broadcasting, video conferencing;
Installing webpages on the Internet, for others; Electronic bulletin board services
[telecommunications services]; Electronic mail; Electronic exchange of messages via
chat lines, chat rooms and Internet forums; E-mail services, telex services; Radio
telecommunications; Communications by fiber [fibre] optic networks;
Communications by computer terminals; Communications by telephone;
Telecommunications routing and junction services; Providing the option of making
tickets available on mobile terminals; Cellular telephone communication; Computer
aided transmission of messages and images; Providing the option of issuing and/or
providing online tickets; Paging services [radio, telephone or other means of
electronic communication]; Satellite transmission; Voice mail services; Facsimile
transmission; Telephone services; Telephone exchange services; Telegraph services;
Communications by telegrams; Transmission of telegrams; Telecommunications;
Telecommunications by means of platforms and portals on the Internet;
Teleconferencing services; Teletext services; Providing the option of presenting and
making available tickets for mobile terminals, in particular mobile telephones;
Providing tickets via the Internet; Providing tickets via mobile telephones;
Transmission of digital files; Transmission of greeting cards online; Message
sending; Rental of telecommunications equipment; Rental of facsimile apparatus;
Rental of message sending apparatus; Rental of modems; Rental of telephones;
Rental of telecommunication equipment; Rental of access time to global computer
networks; Providing access to databases; Videoconferencing services; Web
messaging.
Class 39: Transport; Packaging and storage of goods; Travel arrangement; Towing;
Vehicle breakdown assistance [towing]; Transportation information; Parcel delivery;
Delivery of goods; Newspaper delivery; Passenger transport; Bus transport; Pleasure
boat transport; Transport of travellers; Freighting; Salvage of ships; Icebreaking;
Guarded transport of valuables; Flower delivery; Booking of seats for travel;
Chauffeur services; Freight forwarding; Carting; Transport brokerage; Removal
services; Boat storage; Storage of goods; Wrapping of goods; Unloading cargo;
Storage information; Bottling services; Freight brokerage; Franking of mail;
Porterage; Ambulance transport; Courier services [messages or merchandise];
Storage; Piloting; Aircraft rental; Air transport; Transporting furniture; Message
delivery; Car parking; Tram transport; Physical storage of electronically-stored data
or documents; Transport by pipeline; Escorting of travellers; Motor coach rental;
Travel reservation; Transport reservation; Salvaging; Rescue operations [transport];
Shipbrokerage; Operating canal locks; Marine transport; Launching of satellites for
others; Stevedoring; Taxi transport; Armored-car transport; River transport; Railway
transport; Ferry-boat transport; Car transport; Barge transport; Hauling; Boat
transport; Transport and storage of trash; Transportation logistics; Transport;
Underwater salvage; Sightseeing [tourism]; Arranging of cruises; Travel arrangement;
Freight [shipping of goods]; Traffic information; Boat rental; Vehicle rental; Garage
Decision on Opposition No B 2 838 228 page: 7 of 12
rental; Rental of freezers; Rental of vehicle roof racks; Railway truck rental; Car
rental; Refrigerator rental; Rental of storage containers; Rental of warehouses;
Rental of aircraft engines; Parking place rental; Horse rental; Rental of motor racing
cars; Rental of wheelchairs; Rental of diving suits; Rental of diving bells; Packaging
of goods; Electricity distribution; Distribution of energy; Water distribution; Railway
coach rental; Lighterage services; Water supplying; Refloating of ships; Delivery of
goods by mail order.
Class 41: Education; Providing of training; Entertainment; Sporting and cultural
activities; Translation; Videotaping; Education information; Recreation information;
Providing karaoke services; Vocational retraining; Vocational guidance [education or
training advice]; Discotheque services; Bookmobile services; Club services
[entertainment or education]; Boarding schools; Providing casino facilities [gambling];
Holiday camp services [entertainment]; Health club services [health and fitness
training]; Providing golf facilities; Nursery schools; Providing museum facilities
[presentation, exhibitions]; Night clubs; Providing amusement arcade services;
Providing sports facilities; Sport camp services; Recording studio services; Music-
halls; Amusement parks; Lending libraries; Coaching [training]; Practical training
[demonstration]; Electronic desktop publishing; Entertainer services; Providing
recreation facilities; News reporters services; Disc jockey services; Language
interpreter services; Personal trainer services [fitness training]; Services of schools
[education]; Zoological garden services; Sign language interpretation; Conducting
fitness classes; Presentation of live performances; Educational examination; Ticket
agency services [entertainment]; Photographic reporting; Subtitling; Academies
[education]; Tuition; Television entertainment; Correspondence courses; Film
production, other than advertising films; Movie studios; Cinema presentations;
Photography; Gambling; Gymnastic instruction; Publication of texts, other than
publicity texts; Entertainment information; Calligraphy services; Music composition
services; Layout services, other than for advertising purposes; Microfilming;
Modelling for artists; Videotape editing; Orchestra services; Production of music;
Game services provided on-line from a computer network; Providing on-line
electronic publications, not downloadable; Publication of electronic books and
journals on-line; Arranging and conducting of conferences; Arranging and conducting
of congresses; Arranging and conducting of concerts; Arranging and conducting of
symposiums; Organization of fashion shows for entertainment purposes; Party
planning [entertainment]; Booking of seats for shows; Production of shows; Religious
education; Radio entertainment; Dubbing; Theatre productions; Animal training;
Physical education; Entertainment; Organization of sports competitions; Arranging
and conducting of seminars; Arranging and conducting of workshops [training];
Arranging and conducting of colloquiums; Organization of exhibitions for cultural or
educational purposes; Organization of balls; Operating lotteries; Arranging of beauty
contests; Organization of shows [impresario services]; Organization of competitions
[education or entertainment]; Scriptwriting services; Writing of texts, other than
publicity texts; Rental of audio equipment; Rental of lighting apparatus for theatrical
sets or television studios; Rental of show scenery; Rental of movie projectors and
accessories; Rental of cine-films; Rental of radio and television sets; Games
equipment rental; Toy rental; Rental of sports equipment, except vehicles; Rental of
sports grounds; Rental of skin diving equipment; Rental of stadium facilities; Rental
of tennis courts; Rental of stage scenery; Rental of sound recordings; Rental of
camcorders; Publication of books; Videotape film production; Rental of videotapes;
Rental of video cassette recorders; Timing of sports events; Circuses; Production of
radio and television programmes.
Decision on Opposition No B 2 838 228 page: 8 of 12
The contested goods are the following:
Class 25: Pyjamas; Baby doll pyjamas; Costumes; Costumes (Masquerade -);
Masquerade costumes; Theatrical costumes; Bathing costumes; Swimming
costumes; Halloween costumes; Dance costumes; Folk costumes; Bathing costumes
for women; Fitted swimming costumes with bra cups; Costumes for use in role-
playing games; Costumes for use in children’s dress up play; Slippers; Dance
slippers; Ballet slippers; Pedicure slippers; Leather slippers; Bath slippers; Women’s
foldable slippers; Slippers made of leather; Hats; Fur hats; Woolly hats; Beach hats;
Sun hats; Fashion hats; Baseball hats; Beanie hats; Ski hats; Party hats [clothing];
Hats (Paper -) [clothing]; Paper hats [clothing]; Caps; Sports caps; Flat caps;
Swimming caps [bathing caps]; Swimming caps; Bathing caps; Golf caps; Waterpolo
caps; Caps [headwear]; Skull caps; Bucket caps; Plush clothing; Socks; Tennis
socks; Ankle socks; Sports socks; Slipper socks; Woollen socks; Trouser socks;
Water socks; Thermal socks; Footless socks; Pop socks; Anklets [socks]; Bed socks;
Gloves; Ski gloves; Ear warmers; Ear muffs.
Class 28: Toys, games, playthings and novelties; Sporting articles and equipment;
Fairground and playground apparatus; Festive decorations and artificial Christmas
trees; Plush toys; Stuffed plush toys; Doll costumes; Toy hats; Paper party hats;
Plush stuffed toys; Soft sculpture plush toys; Stuffed and plush toys; Plush dolls;
Christmas stockings; Christmas tree ornaments; Christmas tree decorations; Toy
Christmas trees; Artificial Christmas trees; Christmas trees (Artificial -); Christmas
tree skirts; Decorations for Christmas trees; Ornaments for Christmas trees; Bells for
Christmas trees; Musical Christmas tree ornaments; Christmas tree stand covers;
Artificial snow for Christmas trees; Non-edible Christmas tree ornaments; Christmas
trees of synthetic materials; Snow for Christmas trees (Artificial -); Christmas tree
decorations [other than edible or for illumination]; Christmas trees (Ornaments for -),
except illumination articles and confectionery; Ornaments for Christmas trees, except
illumination articles and confectionery.
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 25
The contested costumes; costumes (masquerade -); masquerade costumes;
theatrical costumes; Halloween costumes; dance costumes; folk costumes;
costumes for use in role-playing games; costumes for use in children’s dress up play;
dance slippers; ballet slippers are similar to the opponent’s rental of show scenery;
rental of stage scenery in Class 41. The opponent’s services are rental services
which include scenery but also costumes used for shows and theatres. The
contested goods are different kinds of clothing that may be costumes used for shows
and theatres. These goods and services can coincide in distribution channels, sales
outlets and public.
The remaining contested pyjamas; baby doll pyjamas; bathing costumes; swimming
costumes; bathing costumes for women; fitted swimming costumes with bra cups;
slippers; pedicure slippers; leather slippers; bath slippers; women’s foldable slippers;
slippers made of leather; hats; fur hats; woolly hats; beach hats; sun hats; fashion
hats; baseball hats; beanie hats; ski hats; party hats [clothing]; hats (paper -)
[clothing]; paper hats [clothing]; caps; sports caps; flat caps; swimming caps [bathing
caps]; swimming caps; bathing caps; golf caps; waterpolo caps; caps [headwear];
Decision on Opposition No B 2 838 228 page: 9 of 12
skull caps; bucket caps; plush clothing; socks; tennis socks; ankle socks; sports
socks; slipper socks; woollen socks; trouser socks; water socks; thermal socks;
footless socks; pop socks; anklets [socks]; bed socks; gloves; ski gloves; ear
warmers; ear muffs are dissimilar to the opponent’s goods and services in Classes
16 (mainly paper goods), 35 (mainly advertising), 38 (mainly telecommunication), 39
(mainly transport) and 41 (mainly training, entertainment, sporting and cultural
activities). They have a different nature and purpose, are neither complementary nor
in competition, and do not have the same distribution channels, end users or usual
origin. They are usually not bought or borrowed in places specialised in theatre
costumes.
Contested goods in Class 28
The contested sporting articles and equipment are dissimilar to the opponent’s rental
of sports equipment, except vehicles. The contested toys, games, playthings; plush
toys; stuffed plush toys; doll costumes; toy hats; plush stuffed toys; soft sculpture
plush toys; stuffed and plush toys; plush dolls are dissimilar to the opponent’s games
equipment rental; toy rental. These goods are also dissimilar to the remaining the
opponent’s goods and services in Classes 16 (mainly paper goods), 35 (mainly
advertising), 38 (mainly telecommunication), 39 (mainly transport) and 41 (mainly
training, entertainment, sporting and cultural activities). Rental services are in
principle always dissimilar to the goods rented. It is not common that producers of
sporting articles and equipment; games and playthings at the same time rent these
products. Even if these goods might be rented and sold in the same sales outlet, they
differ in producer, nature and purpose.
The remaining contested goods, namely novelties; fairground and playground
apparatus; festive decorations and artificial Christmas trees; paper party hats;
Christmas stockings; Christmas tree ornaments; Christmas tree decorations; toy
Christmas trees; artificial Christmas trees; Christmas trees (artificial -); Christmas
tree skirts; decorations for Christmas trees; ornaments for Christmas trees; bells for
Christmas trees; musical Christmas tree ornaments; Christmas tree stand covers;
artificial snow for Christmas trees; non-edible Christmas tree ornaments; Christmas
trees of synthetic materials; snow for Christmas trees (artificial -); Christmas tree
decorations [other than edible or for illumination]; Christmas trees (ornaments for -),
except illumination articles and confectionery; ornaments for Christmas trees, except
illumination articles and confectionery are dissimilar to the opponent’s goods and
services in Classes 16 (mainly paper goods), 35 (mainly advertising), 38 (mainly
telecommunication), 39 (mainly transport) and 41 (mainly training, entertainment,
sporting and cultural activities). They have a different nature and purpose, are neither
complementary nor in competition, and do not have the same distribution channels,
end users or usual origin.
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 goods found to be similar are mainly directed at the public at
large and partially also at business customers with specific professional knowledge
or expertise. The degree of attention is average.
Decision on Opposition No B 2 838 228 page: 10 of 12
c) The signs
TICKeos Tickos
Earlier trade mark Contested sign
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
Both signs are word marks composed of one single word. The earlier mark has seven
letters, the contested mark six. Both signs are meaningless and have an average
degree of distinctiveness.
Visually, the signs coincide in the six letters ‘TICK*OS’, which are placed in the
same position. They differ in the additional letter ‘E’ of the earlier sign, which is
placed in the centre, between the letter ‘K’ and the letter ‘O’. The signs differ also in
upper case, lower case or a combination of both. This is irrelevant, as in the case of
word marks, the word as such is protected, and not its written form. Overall, the signs
are visually highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the sound of the letters
‘TICK*OS’, present identically in both signs. The pronunciation differs in the sound of
the additional letter ‛E’ of the earlier sign, which has no counterpart in the contested
mark and adds a further syllable to the former. The earlier mark has three syllables,
the contested mark has two. Overall, the signs are phonetically 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.
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 claimed that the earlier trade mark enjoys enhanced
distinctiveness/reputation in Germany and Austria but did not file any evidence (such
as market surveys or other documents that show that there is a high degree of trade
mark awareness amongst the relevant public) in order to prove such a claim.
Decision on Opposition No B 2 838 228 page: 11 of 12
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the services in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
The contested goods are partly similar and partly dissimilar to the opponent’s goods
and services. The distinctiveness of the earlier mark is to be considered average, as
no reputation has been proven. The level of attention of the relevant public is
average.
The signs are visually highly similar and aurally similar to an average degree. The six
letters of the contested mark are contained in the same position in the earlier mark.
The latter contains only one additional letter, which is placed in the centre, where the
attention is the lowest.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and therefore the opposition is partly well founded
on the basis of the opponent’s European Union trade mark No 11 835 295.
It follows from the above that the contested trade mark must be rejected for the
goods found to be similar to those of the earlier trade mark.
The rest of the contested goods 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 cannot be successful.
III. 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, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Renata COTTRELL Julia SCHRADER Sigrid DICKMANNS
Decision on Opposition No B 2 838 228 page: 12 of 12
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.