OPPOSITION DIVISION
OPPOSITION No B 2 646 126
Country Kitchenware Supplies LTD., Willow End Park Blackmore Park Road
Welland, Malvern, Worcestershire WR13 6NN, United Kingdom (opponent),
represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, Birmingham
B16 8QQ, United Kingdom (professional representative)
a g a i n s t
Songmics International GmbH, Grünenplatzstr. 16-18, 42899 Remscheid,
Germany and Zhengzhou Ziel Imp & Exp Trade Co. Ltd, No. 2 of Yang Chunli
Lvyun Esate, No. 49 HuaiHe Road, ZhengZhou, People’s Republic of China
(applicants).
On 18/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 646 126 is partially upheld, namely for the following
contested goods:
Class 21: Brushes and brush-making articles; tableware, cookware and
containers; cleaning articles; statues, figurines, plaques and works
of art, made of materials such as porcelain, terra-cotta or glass,
included in the class; containers for flowers; repotting containers for
plants; holders for flowers and plants [flower arranging]; bouquet
holders; holders for flowers; window-boxes; flower baskets; flower
bowls; flower bowls of precious metal; jardinieres of glass;
jardinieres of earthenware; flower pot holders; flower pots; flower
vases; flower vases of precious metal; planters of clay; porcelain
flower pots; planters of plastic; planters of earthenware; planters of
glass; terrariums (indoor -) [plant cultivation]; glass vases; vases;
saucers for flower pots; bowls for plants; bowls for floral
decorations; plant baskets; terrariums (indoor -) [vivariums].
2. European Union trade mark application No 14 570 782 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
Decision on Opposition No B 2 646 126 page: 2 of 15
The opponent filed an opposition against all the goods of European Union trade mark
application No 14 570 782. The opposition is based on European Union trade mark
registration No 6 274 682 for the word mark ‘ZEAL’, United Kingdom trade mark
registration No 2 479 383 for the word mark ‘ZEAL’ and Netherlands, Estonia, Czech
Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria,
Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal,
Slovenia, Finland, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and
Ireland non-registered trade mark ‘ZEAL’. The opponent invoked Articles 8(1)(b), 8(4)
and (5) EUTMR.
SUBSTANTIATION
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s United Kingdom trade mark registration No 2 479 383.
In the present case, the notice of opposition was not accompanied by any evidence
as regards said earlier trade mark.
On 03/02/2016 the opponent was given two months, commencing after the ending of
the cooling-off period, to submit the abovementioned material. This time limit expired,
after extension, on 27/11/2016.
The opponent did not submit any evidence concerning the substantiation of the
earlier United Kingdom trade mark registration No 2 479 383.
According to Rule 20(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), if until expiry of the period referred to in
Rule 19(1) EUTMIR (in the version in force at the time of commencement of the
adversarial part), the opposing party has not proven the existence, validity and scope
of protection of its earlier mark or earlier right, as well as its entitlement to file the
opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on this
earlier mark.
The Opposition Division will now examine the opposition in relation to the opponent’s
European Union trade mark registration No 6 274 682.
REPUTATION — ARTICLE 8(5) EUTMR
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.
Decision on Opposition No B 2 646 126 page: 3 of 15
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
of the alleged reputation of the earlier European Union trade mark registration
No 6 274 682.
On 03/02/2016 the opponent was given two months, commencing after the ending of
the cooling-off period, to submit the abovementioned material. This time limit expired,
after extension, on 27/11/2016.
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 these grounds are concerned in
relation to European Union trade mark registration No 6 274 682.
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 8: Cutlery; kitchen hand tools and implements.
Decision on Opposition No B 2 646 126 page: 4 of 15
Class 9: Scales and measuring spoons.
Class 21: Household or kitchen utensils and containers; brushes; glassware,
porcelain and earthenware, kitchenware, tableware, cookware, bakeware
and china.
Class 35: The bringing together, for the benefit of others, of a variety of goods,
enabling customers to conveniently view and purchase those goods in a
wholesale/retail outlet, or from a catalogue, or from an internet website,
connected with cutlery, kitchen hand tools and implements, scales and
measuring spoons, household or kitchen utensils and containers,
brushes, glassware, porcelain, earthenware, kitchenware, tableware,
cookware, bakeware and china.
The contested goods are the following:
Class 20: Shelves for storage; filing cabinets; ambroid plates; ambroid bars;
mooring buoys, non-metallic; tea carts; display boards; medicine
cabinets; trestles [furniture]; stuffed animals; birds (stuffed -); oyster
shells; bamboo; bamboo curtains; benches [furniture]; reservoirs, not of
metal nor of masonry; closures, not of metal, for containers; yellow
amber; broom handles, not of metal; funerary urns; bed fittings, not of
metal; beds; wood bedsteads; bed casters, not of metal; bedding, except
linen; beehives; picture frames; flower stands; bolts, not of metal; non-
metallic barrels; letter boxes, not of metal or masonry; book rests
[furniture]; library shelves; sideboards; dinner wagons; office furniture;
brush mountings; busts of wood, wax, plaster or plastic; containers, not of
metal [storage, transport]; decorations of plastic for foodstuffs; boxes of
wood or plastic; pegs [pins], not of metal; fixing plugs, not of metal; ivory,
unworked or semi-worked; furniture shelves; fans for personal use, non-
electric; flagpoles; locks, not of metal, for vehicles; staves of wood; non-
metallic barrels; non-metallic barrels; taps for casks, not of metal; window
fittings, not of metal; statuettes of wood, wax, plaster or plastic;
whalebone, unworked or semi-worked; fishing baskets; non-metal bottle
caps; bottle racks; corks for bottles; bottle casings of wood; bottle
closures, not of metal; chopping blocks [tables]; handling pallets, not of
metal; hairdressers' chairs; fodder racks; hooks, not of metal, for clothes
rails; curtain hooks; curtain holders, not of textile material; curtain rollers;
plaited straw, except matting; woven timber blinds [furniture]; plate racks;
gun racks; hand-held mirrors [toilet mirrors]; towel dispensers, fixed, not
of metal; crates; house numbers, not of metal, non-luminous; stag
antlers; workbenches; wood ribbon; reels of wood for yarn, silk, cord;
honeycombs; horn, unworked or semi-worked; covers (garment -)
[storage]; kennels; hat stands; kennels for household pets; non-metal dog
tags; interior textile window blinds; indoor window blinds [shades]
[furniture]; slatted indoor blinds; non-metal cable clamps; fireguards;
settees; edgings of plastic for furniture; trolleys for computers [furniture];
index cabinets; chests, not of metal; numberplates, not of metal; high
chairs for babies; infant walkers; cushions; pet cushions; drains [valves]
made of plastic; water-pipe valves of plastic; clothes hangers and clothes
hooks; clothes hooks, not of metal; mannequins and tailors' dummies;
coatstands; knobs, not of metal; chests of drawers; pillows; bolsters;
head-rests [furniture]; coral; hampers [baskets]; baskets, non-metallic;
wickerwork; corks; cork bands; hospital beds; scratching posts for cats;
Decision on Opposition No B 2 646 126 page: 5 of 15
works of art of wood, wax, plaster or plastic; plastic key cards, not
encoded and not magnetic; cabinet work; counters [tables]; loading
pallets, not of metal; railway waggons [wagons] (loading gauge rods, not
of metal, for -); cask stands, not of metal; playpens; lecterns; beds for
pets; easy chairs; air pillows, not for medical purposes; air cushions, not
for medical purposes; air mattresses, not for medical purposes; massage
tables; mattresses; mats for infant playpens; meerschaum; knife handles,
not of metal; furniture; furniture of metal; furniture fittings, not of metal;
furniture partitions of wood; rollers [casters], not of metal; doors for
furniture; mobiles [decoration]; troughs, not of metal, for mixing mortar;
oyster shells; identification bracelets, not of metal; nesting boxes for
household pets; rivets, not of metal; nesting boxes; paper blinds; screens
[furniture]; boarding stairs, not of metal, mobile, for passengers; bead
curtains for decoration; mother-of-pearl, unworked or semi-worked;
placards of wood or plastics; armchairs; picture frame moldings; curtain
tie-backs; sections of wood for beehives; picture rods; rattan; stands for
calculating machines; racks; shelves for filing-cabinets [furniture]; saw
horses; coffin fittings, not of metal; coffins; hinges, not of metal; display
racks; stools; deck chairs; signboards of wood or plastics; oyster shells;
tortoiseshell imitation; reeds [plaiting materials]; umbrella stands;
sleeping bags for camping; non-mechanical reels, not of metal, for
flexible hoses; winding spools, not of metal, non-mechanical, for flexible
hoses; locks, other than electric, not of metal; keyboards for hanging
keys; costume stands; cupboards; screws, not of metal; nuts, not of
metal; vice benches, not of metal; shelves for typewriters; writing desks;
desks; lockers; school furniture; covers for clothing [wardrobe]; floating
containers, not of metal; scythe handles, not of metal; trolleys [furniture];
seats of metal; sofas; divans; stakes for plants or trees; meat chests, not
of metal; mirrors (silvered glass); mirror tiles; chests for toys; ladders of
wood or plastics; mattresses; mats, removable, for sinks; plugs, not of
metal; flower-pot pedestals; poles, not of metal; statuettes of wood, wax,
plaster or plastic; steps [ladders], not of metal; standing desks; corozo;
embroidery frames; straw edgings; straw plaits; mattress (straw -); seats;
containers, not of metal, for liquid fuel; bakers' bread baskets; stair rods;
animal horns; animal hooves; claws (animal -); tables; tables of metal;
table tops; dressing tables; barrel hoops, not of metal; shoulder poles
[yokes]; transport pallets, not of metal; door fittings, not of metal; non-
metal door bolts; door handles, not of metal; non-metal catches; valves,
not of metal, other than parts of machines; packaging containers of
plastic; sealing caps, not of metal; glass (silvered -) [mirrors]; display
cases; curtain rings; pulleys of plastics for blinds; support rails for
curtains; poles for curtains; waxcomb for beehives; waxcomb for
beehives; wax figures; baby changing tables; washstands [furniture];
hydrostatic [water] beds, not for medical purposes; casks of wood for
decanting wine; inflatable publicity objects; tool handles, not of metal;
changing mats; cradles; wind chimes [decoration]; drafting tables;
magazine racks; newspaper display stands; tent pegs, not of metal;
furniture; clips, not of metal, for cables and pipes; baskets.
Class 21: Brushes and brush-making articles; tableware, cookware and containers;
cleaning articles; statues, figurines, plaques and works of art, made of
materials such as porcelain, terra-cotta or glass, included in the class;
unworked and semi-worked glass, not specified for use; containers for
flowers; repotting containers for plants; sprinkling devices; holders for
flowers and plants [flower arranging]; sprinklers for watering flowers and
Decision on Opposition No B 2 646 126 page: 6 of 15
plants; bouquet holders; holders for flowers; window-boxes; flower
baskets; flower bowls; flower bowls of precious metal; jardinieres of
glass; jardinieres of earthenware; flower syringes; flower pot holders;
flower pots; flower vases; flower vases of precious metal; watering can
sprinklers; seed tray inserts; gardening gloves; garden syringes; watering
cans; compost containers for household use; plastic lids for plant pots;
planters of clay; porcelain flower pots; planters of plastic; planters of
earthenware; planters of glass; terrariums (indoor -) [plant cultivation];
plastic spray nozzles; water syringes for spraying plants; glass vases;
vases; saucers for flower pots; pot plant support sticks; sprayer wands for
garden hoses; nozzles for watering hose; sprayers attached to garden
hoses; greenhouse syringes; spray nozzles for garden hoses; nozzles for
hosepipes; bowls for plants; bowls for floral decorations; seed trays;
sprinklers; plant baskets; plant syringes; covers, not of paper, for flower
pots; terrariums (indoor -) [vivariums]; aquaria and vivaria; devices for
pest and vermin control; litter scoops for use with pet animals; containers
for bird food; wire cages for household pets; electronic pet feeders; filters
for use in cat litter pans; small animal feeders; bird feeders for feeding
caged birds; bird feeders in the nature of containers; litter trays for birds;
food containers for pet animals; plastic containers for dispensing food to
pets; bird feeders for feeding birds in the wild; mangers for animals;
mangers for cows; mangers for horses; mangers for sheep; feeding
troughs for livestock; poultry rings; goldfish bowls; scoops for the disposal
of pet waste; cat litter pans; combs for use on domestic animals; cages of
metal for domestic use; bird baths not being structures; bird cages for
domestic birds; rings for birds; animal activated animal feeders; animal
activated livestock waterers; animal activated livestock feeders; bird
baths; birdcages; poultry troughs; feeding troughs; drinking troughs;
plastic containers for dispensing drink to pets; cages for transporting
pets; combs for animals; currycombs; perches for bird cages; pig troughs;
scoops for the disposal of animals excrement; non-mechanized animal
feeders; non-mechanized pet waterers in the nature of portable water
and fluid dispensers for pets; nest eggs, artificial; metal pans for cattle;
feeding troughs of metal for cattle; dog food scoops; plastics trays for use
as litter trays for cats; bird feeders; pet feeding and drinking bowls;
watering troughs for cattle; battery operated lint removers; ironing boards;
flat-iron stands; ironing cloths; electric lint removers; glove stretchers;
shirt stretchers; trouser presses; trouser stretchers; stretchers for
clothing; buttonhooks; ironing boards [kotedai]; tie presses; frames for
drying and maintaining the shape of clothing items; shoe horns; wax-
polishing appliances, non-electric, for shoes; shoe trees; boot stretchers
of wood; boot jacks; boot trees [stretchers]; clothes drying racks; clothes-
pegs; laundry drying racks; clothes drying hangers; ironing board covers,
shaped; clothes drying hangers specially designed for specialty clothing;
cosmetic and toilet utensils, and bathroom articles (other than teeth
cleaning articles).
Class 26: Artificial flowers; badges for wear, not of precious metal; badges [buttons]
(ornamental novelty -); brassards; expanding bands for holding sleeves;
elastic ribbons; ribbons [haberdashery]; cords for clothing; lace for
edgings; trimmings for clothing; brooches [clothing accessories]; chenille
[passementerie]; heat adhesive patches for decoration of textile articles;
buttons; false beards; false moustaches; tapes for curtain headings;
feathers [clothing accessories]; festoons [embroidery]; sewing thimbles;
whalebones for corsets; heat adhesive patches for repairing textile
Decision on Opposition No B 2 646 126 page: 7 of 15
articles; orsedew [trimmings for clothing]; fringes; artificial garlands; mica
spangles; gold embroidery; belt clasps; hair bands; hair colouring caps;
bobby pins; hair pins; hair nets; bows for the hair; decorative articles for
the hair; barrettes; hair extensions; tresses of hair; hooks [haberdashery];
binding needles; trouser clips for cyclists; fastenings for suspenders; hat
ornaments, not of precious metal; frills [lacework]; edgings for clothing;
eyelets for clothing; frills for clothing; dress fastenings; skirt flounces;
hook and pile fastening tapes; buttons; rug hooks; collar supports;
artificial flower wreaths; artificial flowers; artificial fruit; haberdashery,
except thread; reins for guiding children; hair curlers; curlpapers; human
hair; needle cases; boxes for needles; needle cushions; needles; needles
for wool combing machines; sewing boxes; sewing needles; false hems;
curling pins; spangles for clothing; beads, other than for making jewelry;
wigs; false hair; picot [lace]; lace trimmings; prize ribbons; top-knots
[pompoms]; zippers; zippers for bags; rosettes [haberdashery]; saddlers'
needles; cords for rimming, for clothing; shuttles for making fishing nets;
hooks for corsets; dress body fasteners; buckles [clothing accessories];
bodkins; shoe laces; shoe hooks; shoemakers' needles; shoe eyelets;
shoe buckles; shoe fasteners; shoe ornaments, not of precious metal;
shoulder pads for clothing; silver embroidery; bobbins for retaining
embroidery floss or wool [not parts of machines]; competitors' numbers;
pin cushions; pins, other than jewellery [jewelry (am.)]; embroidery;
embroidery needles; darning lasts; darning needles; ostrich feathers
[clothing accessories]; knitting needles; toupees; braids; tassels
[haberdashery]; birds' feathers [clothing accessories]; letters for marking
linen; monogram tabs for marking linen; numerals for marking linen;
buttons; hooks and eyes; eyelets; woollen laces; lace; ribbons of textile
materials; tapes for curtain headings; tape for fixing wigs; cords for
clothing; tapes for repairing textile articles; hair bands; ribbons of
transparent plastic for decorative purposes; lanyards [cords] for wear.
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 20
The contested shelves for storage; filing cabinets; ambroid plates; ambroid bars;
mooring buoys, non-metallic; tea carts; display boards; medicine cabinets; trestles
[furniture]; stuffed animals; birds (stuffed -); oyster shells; bamboo; bamboo curtains;
benches [furniture]; reservoirs, not of metal nor of masonry; closures, not of metal,
for containers; yellow amber; broom handles, not of metal; funerary urns; bed fittings,
not of metal; beds; wood bedsteads; bed casters, not of metal; bedding, except linen;
beehives; picture frames; flower stands; bolts, not of metal; non-metallic barrels;
letter boxes, not of metal or masonry; book rests [furniture]; library shelves;
sideboards; dinner wagons; office furniture; brush mountings; busts of wood, wax,
plaster or plastic; containers, not of metal [storage, transport]; decorations of plastic
for foodstuffs; boxes of wood or plastic; pegs [pins], not of metal; fixing plugs, not of
metal; ivory, unworked or semi-worked; furniture shelves; fans for personal use, non-
electric; flagpoles; locks, not of metal, for vehicles; staves of wood; non-metallic
barrels; non-metallic barrels; taps for casks, not of metal; window fittings, not of
metal; statuettes of wood, wax, plaster or plastic; whalebone, unworked or semi-
worked; fishing baskets; non-metal bottle caps; bottle racks; corks for bottles; bottle
Decision on Opposition No B 2 646 126 page: 8 of 15
casings of wood; bottle closures, not of metal; chopping blocks [tables]; handling
pallets, not of metal; hairdressers' chairs; fodder racks; hooks, not of metal, for
clothes rails; curtain hooks; curtain holders, not of textile material; curtain rollers;
plaited straw, except matting; woven timber blinds [furniture]; plate racks; gun racks;
hand-held mirrors [toilet mirrors]; towel dispensers, fixed, not of metal; crates; house
numbers, not of metal, non-luminous; stag antlers; workbenches; wood ribbon; reels
of wood for yarn, silk, cord; honeycombs; horn, unworked or semi-worked; covers
(garment -) [storage]; kennels; hat stands; kennels for household pets; non-metal
dog tags; interior textile window blinds; indoor window blinds [shades] [furniture];
slatted indoor blinds; non-metal cable clamps; fireguards; settees; edgings of plastic
for furniture; trolleys for computers [furniture]; index cabinets; chests, not of metal;
numberplates, not of metal; high chairs for babies; infant walkers; cushions; pet
cushions; drains [valves] made of plastic; water-pipe valves of plastic; clothes
hangers and clothes hooks; clothes hooks, not of metal; mannequins and tailors'
dummies; coatstands; knobs, not of metal; chests of drawers; pillows; bolsters; head-
rests [furniture]; coral; hampers [baskets]; baskets, non-metallic; wickerwork; corks;
cork bands; hospital beds; scratching posts for cats; works of art of wood, wax,
plaster or plastic; plastic key cards, not encoded and not magnetic; cabinet work;
counters [tables]; loading pallets, not of metal; railway waggons [wagons] (loading
gauge rods, not of metal, for –); cask stands, not of metal; playpens; lecterns; beds
for pets; easy chairs; air pillows, not for medical purposes; air cushions, not for
medical purposes; air mattresses, not for medical purposes; massage tables;
mattresses; mats for infant playpens; meerschaum; knife handles, not of metal;
furniture; furniture of metal; furniture fittings, not of metal; furniture partitions of wood;
rollers [casters], not of metal; doors for furniture; mobiles [decoration]; troughs, not of
metal, for mixing mortar; oyster shells; identification bracelets, not of metal; nesting
boxes for household pets; rivets, not of metal; nesting boxes; paper blinds; screens
[furniture]; boarding stairs, not of metal, mobile, for passengers; bead curtains for
decoration; mother-of-pearl, unworked or semi-worked; placards of wood or plastics;
armchairs; picture frame moldings; curtain tie-backs; sections of wood for beehives;
picture rods; rattan; stands for calculating machines; racks; shelves for filing-cabinets
[furniture]; saw horses; coffin fittings, not of metal; coffins; hinges, not of metal;
display racks; stools; deck chairs; signboards of wood or plastics; oyster shells;
tortoiseshell imitation; reeds [plaiting materials]; umbrella stands; sleeping bags for
camping; non-mechanical reels, not of metal, for flexible hoses; winding spools, not
of metal, non-mechanical, for flexible hoses; locks, other than electric, not of metal;
keyboards for hanging keys; costume stands; cupboards; screws, not of metal; nuts,
not of metal; vice benches, not of metal; shelves for typewriters; writing desks; desks;
lockers; school furniture; covers for clothing [wardrobe]; floating containers, not of
metal; scythe handles, not of metal; trolleys [furniture]; seats of metal; sofas; divans;
stakes for plants or trees; meat chests, not of metal; mirrors (silvered glass); mirror
tiles; chests for toys; ladders of wood or plastics; mattresses; mats, removable, for
sinks; plugs, not of metal; flower-pot pedestals; poles, not of metal; statuettes of
wood, wax, plaster or plastic; steps [ladders], not of metal; standing desks; corozo;
embroidery frames; straw edgings; straw plaits; mattress (straw -); seats; containers,
not of metal, for liquid fuel; bakers' bread baskets; stair rods; animal horns; animal
hooves; claws (animal -); tables; tables of metal; table tops; dressing tables; barrel
hoops, not of metal; shoulder poles [yokes]; transport pallets, not of metal; door
fittings, not of metal; non-metal door bolts; door handles, not of metal; non-metal
catches; valves, not of metal, other than parts of machines; packaging containers of
plastic; sealing caps, not of metal; glass (silvered -) [mirrors]; display cases; curtain
rings; pulleys of plastics for blinds; support rails for curtains; poles for curtains;
waxcomb for beehives; waxcomb for beehives; wax figures; baby changing tables;
washstands [furniture]; hydrostatic [water] beds, not for medical purposes; casks of
wood for decanting wine; inflatable publicity objects; tool handles, not of metal;
Decision on Opposition No B 2 646 126 page: 9 of 15
changing mats; cradles; wind chimes [decoration]; drafting tables; magazine racks;
newspaper display stands; tent pegs, not of metal; furniture; clips, not of metal, for
cables and pipes; baskets are essentially pieces of furniture and parts therefor, as
well as raw materials. The opponent’s goods and services in Classes 8, 9, 21 and 35
respectively consist of hand-operated kitchen articles, measuring instruments,
household utensils and trading services. The contested goods and the opponent’s
goods and services have different natures, purposes and methods of use. They do
not have the same suppliers or producers. They are not complementary to or in
competition with each other. Furthermore, even though in some cases they may be
sold through the same distribution channels, they cannot be found on the same
shelves or in the same sections or departments of the relevant points of sale.
Therefore, the contested goods are dissimilar to all of the opponent’s goods and
services.
Contested goods in Class 21
The contested brushes; tableware, cookware and containers; cleaning articles;
statues, figurines, plaques and works of art, made of materials such as porcelain,
terra-cotta or glass, included in the class are essentially household and cleaning
products are identical to the opponent’s containers; brushes; glassware, porcelain
and earthenware, tableware, cookware, as these goods are identically contained in
both lists, include, are included in, or overlap with the opponent’s goods.
The contested brush-making articles are similar to the opponent’s brushes given that
the can coincide in nature, purpose, manufacturers and they can be sold via the
same outlets.
The contested containers for flowers; repotting containers for plants; holders for
flowers and plants [flower arranging]; bouquet holders; holders for flowers; window-
boxes; flower baskets; flower bowls; flower bowls of precious metal; jardinieres of
glass; jardinieres of earthenware; flower pot holders; flower pots; flower vases; flower
vases of precious metal; planters of clay; porcelain flower pots; planters of plastic;
planters of earthenware; planters of glass; terrariums (indoor -) [plant cultivation];
glass vases; vases; saucers for flower pots; bowls for plants; bowls for floral
decorations; plant baskets; terrariums (indoor -) [vivariums] are gardening articles
which can also serve a decorative purpose. To this extent, they are similar to the
opponent’s glassware, porcelain and earthenware, which consist of household
articles that serve many functional, but also decorative purposes. Therefore, these
goods can have the same purpose and, in some cases, be made of the same
materials. Moreover they can be distributed through the same channels, produced by
the same undertaking and target the same public.
The contested unworked and semi-worked glass, not specified for use is a raw
material. The contested sprinkling devices; sprinklers for watering flowers and plants;
flower syringes; watering can sprinklers; seed tray inserts; gardening gloves; garden
syringes; watering cans; compost containers for household use; plastic lids for plant
pots; plastic spray nozzles; water syringes for spraying plants; pot plant support
sticks; sprayer wands for garden hoses; nozzles for watering hose; sprayers
attached to garden hoses; greenhouse syringes; spray nozzles for garden hoses;
nozzles for hosepipes; seed trays; sprinklers; plant syringes; covers, not of paper, for
flower pots; aquaria and vivaria; devices for pest and vermin control are gardening
articles which, unlike the abovementioned other gardening articles, do not serve a
decorative purpose. The contested litter scoops for use with pet animals; containers
for bird food; wire cages for household pets; electronic pet feeders; filters for use in
cat litter pans; small animal feeders; bird feeders for feeding caged birds; bird
Decision on Opposition No B 2 646 126 page: 10 of 15
feeders in the nature of containers; litter trays for birds; food containers for pet
animals; plastic containers for dispensing food to pets; bird feeders for feeding birds
in the wild; mangers for animals; mangers for cows; mangers for horses; mangers for
sheep; feeding troughs for livestock; poultry rings; goldfish bowls; scoops for the
disposal of pet waste; cat litter pans; combs for use on domestic animals; cages of
metal for domestic use; bird baths not being structures; bird cages for domestic
birds; rings for birds; animal activated animal feeders; animal activated livestock
waterers; animal activated livestock feeders; bird baths; birdcages; poultry troughs;
feeding troughs; drinking troughs; plastic containers for dispensing drink to pets;
cages for transporting pets; combs for animals; currycombs; perches for bird cages;
pig troughs; scoops for the disposal of animals excrement; non-mechanized animal
feeders; non-mechanized pet waterers in the nature of portable water and fluid
dispensers for pets; nest eggs, artificial; metal pans for cattle; feeding troughs of
metal for cattle; dog food scoops; plastics trays for use as litter trays for cats; bird
feeders; pet feeding and drinking bowls; watering troughs for cattle; battery operated
lint removers; ironing boards; flat-iron stands; ironing cloths; electric lint removers;
glove stretchers; shirt stretchers; trouser presses; trouser stretchers; stretchers for
clothing; buttonhooks; ironing boards [kotedai]; tie presses; frames for drying and
maintaining the shape of clothing items; shoe horns; wax-polishing appliances, non-
electric, for shoes; shoe trees; boot stretchers of wood; boot jacks; boot trees
[stretchers]; clothes drying racks; clothes-pegs; laundry drying racks; clothes drying
hangers; ironing board covers, shaped; clothes drying hangers specially designed for
specialty clothing; cosmetic and toilet utensils, and bathroom articles (other than
teeth cleaning articles) are articles for animals. The contested goods and the
opponent’s goods and services, as have been defined above, have different natures,
purposes and methods of use. They do not have the same suppliers or producers.
They are not complementary to or in competition with each other. Furthermore, even
though in some cases they may be sold through the same distribution channels, they
cannot be found on the same shelves or in the same sections or departments of the
relevant points of sale. Therefore, the contested goods are dissimilar to all of the
opponent’s goods and services.
Contested goods in Class 26
The contested artificial flowers; badges for wear, not of precious metal; badges
[buttons] (ornamental novelty -); brassards; expanding bands for holding sleeves;
elastic ribbons; ribbons [haberdashery]; cords for clothing; lace for edgings;
trimmings for clothing; brooches [clothing accessories]; chenille [passementerie];
heat adhesive patches for decoration of textile articles; buttons; false beards; false
moustaches; tapes for curtain headings; feathers [clothing accessories]; festoons
[embroidery]; sewing thimbles; whalebones for corsets; heat adhesive patches for
repairing textile articles; orsedew [trimmings for clothing]; fringes; artificial garlands;
mica spangles; gold embroidery; belt clasps; hair bands; hair colouring caps; bobby
pins; hair pins; hair nets; bows for the hair; decorative articles for the hair; barrettes;
hair extensions; tresses of hair; hooks [haberdashery]; binding needles; trouser clips
for cyclists; fastenings for suspenders; hat ornaments, not of precious metal; frills
[lacework]; edgings for clothing; eyelets for clothing; frills for clothing; dress
fastenings; skirt flounces; hook and pile fastening tapes; buttons; rug hooks; collar
supports; artificial flower wreaths; artificial flowers; artificial fruit; haberdashery,
except thread; reins for guiding children; hair curlers; curlpapers; human hair; needle
cases; boxes for needles; needle cushions; needles; needles for wool combing
machines; sewing boxes; sewing needles; false hems; curling pins; spangles for
clothing; beads, other than for making jewelry; wigs; false hair; picot [lace]; lace
trimmings; prize ribbons; top-knots [pompoms]; zippers; zippers for bags; rosettes
[haberdashery]; saddlers' needles; cords for rimming, for clothing; shuttles for making
Decision on Opposition No B 2 646 126 page: 11 of 15
fishing nets; hooks for corsets; dress body fasteners; buckles [clothing accessories];
bodkins; shoe laces; shoe hooks; shoemakers' needles; shoe eyelets; shoe buckles;
shoe fasteners; shoe ornaments, not of precious metal; shoulder pads for clothing;
silver embroidery; bobbins for retaining embroidery floss or wool [not parts of
machines]; competitors' numbers; pin cushions; pins, other than jewellery [jewelry
(am.)]; embroidery; embroidery needles; darning lasts; darning needles; ostrich
feathers [clothing accessories]; knitting needles; toupees; braids; tassels
[haberdashery]; birds' feathers [clothing accessories]; letters for marking linen;
monogram tabs for marking linen; numerals for marking linen; buttons; hooks and
eyes; eyelets; woollen laces; lace; ribbons of textile materials; tapes for curtain
headings; tape for fixing wigs; cords for clothing; tapes for repairing textile articles;
hair bands; ribbons of transparent plastic for decorative purposes; lanyards [cords]
for wear are essentially dressmakers’ articles, natural and synthetic hair to wear and
adornments. The contested goods and the opponent’s goods and services, as have
been defined above, have different natures, purposes and methods of use. They do
not have the same suppliers or producers. They are not complementary to or in
competition with each other. Furthermore, they are not sold through the same
distribution channels. Therefore, the contested goods are dissimilar to all of the
opponent’s goods and 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 goods found to be identical or similar are directed at the
public at large. The degree of attention is average.
c) The signs
ZEAL ZIEL
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).
The unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
Decision on Opposition No B 2 646 126 page: 12 of 15
The earlier mark is meaningful in certain territories, for example in those countries
where English is understood. The Opposition Division finds it appropriate to focus the
comparison of the signs on the English-speaking part of the public such as
consumers in the United Kingdom, Ireland and Malta.
The earlier mark is the word mark ‘ZEAL’, which will be perceived it as the strong
interest in a certain objective. Not having any connection with the relevant goods, this
word is distinctive.
The contested sign is the word mark ‘ZIEL’, which, contrary to what the applicant
argued, is meaningless for the relevant public and, therefore, distinctive.
Both the earlier mark and contested sign are word marks and, therefore, they have
no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in their first and last letter ‘Z**L’. They also have letter ‘E’
in common, which is placed in second position in the earlier mark and third position in
the contested sign. Admittedly, they differ in the letter ‘A’ of the earlier mark and ‘I’ of
the contest sign; however this should be seen in the context of the coincidence of
three letters out of four, two of which in identical positions. Therefore, the signs are
visually highly similar.
Aurally, the signs will be pronounced in the same way by the relevant public, namely
/ziːl/ ‘’. Therefore, they are aurally identical.
Conceptually, although the public in the relevant territory will perceive the meaning
of the earlier mark as explained above, the other sign has no meaning in that
territory. Since one of the signs will not be associated with any meaning, 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.
As seen above, the opponent claimed reputation under Article 8(5) EUTMR but failed
to provide evidence. Therefore, 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 connection with the goods 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
In the present case, the contested goods are partly identical, partly similar and partly
dissimilar to the opponent’s goods and services. The relevant goods target the public
at large, whose degree of attention is average. The signs are visually highly similar to
the extent that they coincide in three out of four letters, two of which are placed in
identical position. Moreover, the marks are aurally identical. The fact that the marks
Decision on Opposition No B 2 646 126 page: 13 of 15
are not conceptually similar must be put in the context of the abovementioned
commonalities.
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). In the present case, the
level of similarity of the relevant goods, together with the factors mentioned above, is
clearly sufficient to offset the differences between the signs.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the English-speaking part of the public and therefore the
opposition is partly well founded on the basis of the opponent’s European Union
trade mark registration No 6 274 682. As stated above in section c) of this decision, a
likelihood of confusion for only part of the relevant public of the European Union is
sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As the 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 as far as it is
based on European Union trade mark registration No 6 274 682.
The Opposition Division will now examine the opposition in relation to the opponent’s
Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom,
Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany,
Latvia, Portugal, Slovenia, Finland, Lithuania, Greece, Malta, Romania, Sweden,
Luxembourg and Ireland non-registered trade mark ‘ZEAL’.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF
TRADE — ARTICLE 8(4) EUTMR
Decision on Opposition No B 2 646 126 page: 14 of 15
According to Article 8(4) EUTMR, upon opposition by the proprietor of a
non-registered trade mark or of another sign used in the course of trade of more than
mere local significance, the trade mark applied for will not be registered where and to
the extent that, pursuant to the Union legislation or the law of the Member State
governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration
of the European Union trade mark, or the date of the priority claimed for the
application for registration of the European Union trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent
trade mark.
The condition requiring use in the course of trade is a fundamental requirement,
without which the sign in question cannot enjoy any protection against the
registration of a European Union trade mark, irrespective of the requirements to be
met under national law in order to acquire exclusive rights.
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 submitted 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 Article 7(1) EUTMDR 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 Article 7(2) EUTMDR Rule 19(2) EUTMIR (in the version in force at the
time of commencement of the adversarial part), within the period referred to above,
the opposing party must also file proof of the existence, validity and scope of
protection of its earlier mark or earlier right, as well as evidence proving its
entitlement to file the opposition.
In the present case, the notice of opposition was not accompanied by any evidence
of use of the earlier sign in the course of trade.
On 03/02/2016 the opponent was given two months, commencing after the ending of
the cooling-off period, to submit the abovementioned material. This time limit expired,
after extension, on 27/11/2016.
The opponent did not submit any evidence of use in the course of trade of the earlier
Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom,
Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany,
Latvia, Portugal, Slovenia, Finland, Lithuania, Greece, Malta, Romania, Sweden,
Luxembourg and Ireland non-registered trade mark ‘ZEAL’.
Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the
opposition must be rejected as unfounded also insofar as this ground is concerned in
relation to Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United
Decision on Opposition No B 2 646 126 page: 15 of 15
Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium,
Germany, Latvia, Portugal, Slovenia, Finland, Lithuania, Greece, Malta, Romania,
Sweden, Luxembourg, Ireland non-registered trade mark ‘ZEAL’.
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
Andrea VALISA Orsola LAMBERTI Michele M.
BENEDETTI-ALOISI
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.