The trademark T was filed by Tengelmann Warenhandelsgesellschaft KG, a corporation established under the laws of the Federal Republic of Germany (the "Applicant"). The application was published for oppositions on November 27, 2018, and received one opposition filed on February 27, 2019 by C&C IP UK LIMITED on (a) Likelihood of confusion, (b) Unfair advantage and detriment to distinctiveness or repute. the opponent was represented by FRKelly and proceedings were handled in English, and the oppositon was dismissed by the Euorpean Union Intellectual Property Office with decision issued February 27, 2019
The application was filed in German, and German was also language of all opposition proceedings (English was selected as the second language).
Appointment and Replacement of representative of the trademark registration was recorded on October 29, 2018. Deletion of the representative of the trademark registration was recorded on October 29, 2018. Appointment and Replacement of representative of the trademark registration was recorded on November 14, 2018. Appointment and Replacement of representative of the trademark registration was recorded on October 20, 2019. Deletion of the representative of the trademark registration was recorded on October 20, 2019. Change of name and professional address of the trademark registration was recorded on January 24, 2021. Change of name and address of the trademark registration was recorded on February 23, 2021. Change of name and professional address of the trademark registration was recorded on February 23, 2021. Change of name and professional address of the trademark registration was recorded on February 25, 2021. Relative errors of the trademark registration was recorded on May 25, 2021. Change of name and address of the trademark registration was recorded on November 25, 2021. Change of name and professional address of the trademark registration was recorded on November 25, 2021. Partial Surrender of the trademark registration was recorded on September 14, 2023.
The Opposition with reference B 003076991 was partially refused EUTMA/IR according to Article 8(1)(b) EUTMR with decision issued on August 25, 2020 by the EUIPO.
Goods And Services
The mark was filed in class 9 with Electronic publications, downloadable.
The mark was filed in class 16 with following description of goods:
Paper cardboard
Printed matter
Bookbinding material
Photographs
Stationery
Adhesives for stationery purposes, 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
Pamphlets
Books
Diagrams
Graphic representations
Manuals [handbooks]
Calendars
Prospectuses
Newsletters
Magazines [periodicals]
Writing materials
Stickers [stationery]
Printed publications
Newspapers.
The mark was filed in class 17 with following description of goods:
Rubber packaging
Adhesive bands, other than stationery and not for medical or household purposes
Bags [envelopes, pouches] of rubber, for packaging.
The mark was filed in class 21 with following description of goods:
Kitchen utensils and containers
Glassware, porcelain and earthenware not included in other classes
Kitchen containers
Works of art, of porcelain, terra-cotta or glass
Glassware for household purposes
Tea services [tableware]
Crystal [glassware]
Services [dishes]
Household utensils
Kitchen utensils.
The mark was filed in class 24 with following description of goods:
Textiles and textile goods, included in class 24
Non-woven textile fabrics
Fabrics
Woollen fabric
Flax fabrics
Hand towels
Table linen, not of paper
Banners of textile or plastic.
The mark was filed in class 28 with Toys and Games..
The mark was filed in class 29 with following description of goods:
Meat, fish, poultry and game
Meat extracts
Preserved, dried and cooked fruits and vegetables, including dried or roasted nuts (fruits)
Jellies
Jams, compotes
Eggs, milk and milk products
Edible oils and fats.
The mark was filed in class 30 with following description of goods:
Bread, pastry and confectionery, Cakes and confectionery
Cookies
Edible ices
Honey, treacle
Yeast, baking-powder
Salt
Mustard
Vinegar, sauces(condiments)
Spices
Chocolate
Preparations based on chocolate
Pralines and chocolate truffles, including the aforesaid with liquid or semi-solid fillings
Cocoa products
Fudges
Drinks made from chocolate and cocoa.
The mark was filed in class 31 with following description of goods:
Agricultural, horticultural and forestry products and grains, included in class 31
Fresh fruits and vegetables
Seeds, natural plants and flowers
Plants.
The mark was filed in class 35 with following description of goods:
Business management
Business advice and administration services
Office functions
Secretarial services
Document reproduction
Professional business and organisational consultancy
Procurement services, for others
Arranging and settlement of energy supply or energy procurement contracts
Project and business investigations (due diligence) from an organisational and professional business perspective
Coordination of due diligence and transaction processes
Management and optimisation of real estate portfolios from an organisational and professional business perspective
Procurement of contracts [for others]
Arranging of commercial and business contacts
Data compilation and systematisation
Advertising and marketing
Promotion services
Market research and opinion polling
Market analysis
Auditing, namely book-keeping, accountancy and control of operational processes
Business organisation consulting
Development of usage concepts for real estate with regard to professional business matters (facility management)
Referral services, Commercial trading and consumer information services
Strategic sales consultancy
Administration, support and optimisation in relation to real estate contracts, in particular rental and leasing contracts
Supply services for third parties (purchase of goods and services for third parties)
Subscription services
Ordering services
Market research and opinion polling, market analysis
Delivery services and invoice management, including within the framework of e-commerce
Personnel management consultancy
Temporary employment agencies, employment agencies, personnel recruitment, psychological testing for the selection of personnel
Business inquiries
Business management and organization consultancy
Advisory services for business management
Drawing up of business expert reports
Business efficiency expert services
Economic forecasting
Commercial information agencies, Public relations services
Organization of exhibitions for commercial or advertising purposes
Business management for holdings
Outsourcing services [business assistance]
Planning and monitoring of business developments with regard to organisational matters
Arranging of contracts for others regarding the sale of goods and the providing of services, and arranging of contracts regarding the purchase and sale of goods and the providing of services, all the aforesaid services for others, including via electronic data networks, in particular the Internet
Office machines and equipment rental and rental of vending machines
Office machines and equipment rental
Rental of photocopying machines
Telephone answering for unavailable subscribers
Retailing and wholesaling, including via mail order and online shops, and the bringing together, for the benefit of others, of the following goods (excluding the transport thereof), for presentation and sales purposes, and order acceptance for the following goods: chemicals used in industry, science and photography, and agriculture, horticulture and forestry
Unprocessed artificial resins, unprocessed plastics, Manure, Fire extinguishing compositions, Tempering and soldering preparations, Chemical substances for preserving food-stuffs, Tanning substances, Adhesives used in industry, Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, toiletry preparations, Hair lotions, dentifrices
Industrial oil and greases, Lubricants, Dust absorbing, wetting and binding compostions, Fuels (including motor spirit) and illuminants, Candles and wicks for lighting, Pharmaceutical and veterinary preparations, Sanitary preparations for medical purposes, Dietetic substances adapted for medical use, food for babies
Plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, common metals and their alloys, metal materials for building, transportable buildings of metal, railway material of metal, non-electric cables and wires of common metal, ironmongery and small items of metal hardware, pipes of metal, safes, ores
Machines and machine tools for the treatment of materials and manufacturing, Motors and engines, Machine coupling and transmission components, Agricultural implements other than hand-operated, Incubators for eggs, Hand tools and implements (hand-operated), cutlery, Forks and spoons, Side arms, Shaving equipment, scientific, Nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments
Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, surgical, medical, dental and veterinary instruments and apparatus
Artificial limbs, eyes and teeth, orthopaedic articles, suture materials, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, vehicles, apparatus for locomotion by land, air or water, firearms, ammunition and projectiles, explosives, fireworks, precious metals and their alloys, jewellery
Precious stones, horological and chronometric instruments, musical instruments, paper, cardboard, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, materials for artists, paintbrushes, typewriters and office requisites, except furniture, plastic materials for packaging, printers' type, printing blocks, pamphlets, books, diagrams
Graphic representations, manuals, Calendars, Prospectuses, Newsletters, Magazines (periodicals), Rubber, Gutta percha, Gums, Asbestos, mica, Goods of plastic (semiconductors), packing, stopping and insulating materials, Leather and imitations of leather, Animal skins, hides, Trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, Construction materials (not of metal), Non-metallic rigid pipes for building and construction purposes
Asphalt, pitch and bitumen, non-metallic transportable buildings, monuments, not of metal, furniture, mirrors, picture frames, corks, household or kitchen utensils and containers, combs and sponges, brushes, except paintbrushes, brush-making materials, articles for cleaning purposes, steel wool, unworked or semi-worked glass, except building glass
Glassware, porcelain and earthenware, Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags, Padding and stuffing materials (except of rubber or plastics), Raw fibrous textile, Yarns and threads, for textile use, Textiles and textile goods, Bed and table covers, clothing, footwear, headgear, lace and embroidery, ribbons and braid, Buttons, hooks and eyes, needles, Artificial flowers, Rugs, carpets
Mats, linoleum and other materials for covering existing floors, Wall coverings (non-textile), Games and playthings, Gymnastic and sporting articles, decorations for Christmas trees, Meat, fish, poultry and game, Meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, Eggs, milk, and milk products, Edible oils and fats, Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, Flour and preparations made from cereals, bread, pastry and confectionery
Sugar confectionery, chocolate, chocolate products, including pralines, in particular including with liquid or semi-solid fillings, truffles and mini-truffles with and without alcohol, mocha beans, sliced almonds and flaked almonds, brittle, chocolate-coated fruits, marzipan and marzipan-coated fruits
Ices, honey, treacle, yeast, baking-powder, Salt, mustard, Vinegar, sauces (condiments), spices, ice, Flour and preparations made from cereals
In particular wheat flour, wheat meal, rya flour, Rye meal, Corn meal, Semolina, Milling by-products, including bran, semolina bran and cereal germ, Chips [cereal products], Mixtures of the aforesaid goods and mixtures containing additives, including sugar, starches, And fats or Baking preparations, agricultural, horticultural and forestry products, including grains, Live animals, Fresh fruits and vegetables, Seeds, Natural plants and flowers, Foodstuffs for animals
Malt, beers, Mineral and aerated waters and other non-alcoholic drinks, Fruit drinks and fruit juices, Syrups and other preparations for making beverages, alcoholic beverages (except beers), tobacco, Smokers' articles, matches
Exhibition and presentation of goods, including via the internet
Rental of objects in connection with the providing of the aforesaid services, included in this class
Consultancy and information in relation to the aforesaid services, included in this class
Professional business monitoring and control of construction projects, professional business management of costs in connection with construction projects, creation of cost-benefit analyses in relation to construction projects
Creation of performance-target analyses in relation to construction projects
Cost price analysis in relation to construction projects.
The mark was filed in class 36 with following description of goods:
Insurance
Financial affairs
Banking and financial services
Real estate affairs
Credit leasing
Apartment house management
Financial affairs
Monetary affairs
Services of investment companies, holding companies and collective investment undertakings, in particular portfolio management
Services in connection with monetary affairs conducted by a trust company
Services in connection with the issuance of travellers' cheques and credit and fuel cards
Services in connection with the listing of companies on the stock exchange, included in class 36
Monetary affairs, in particular services of investment companies and holding companies
Domestic and foreign banking transactions
Credit agencies
Arranging financial loans
Brokerage of shares in companies and business intermediary services
Holding and fiduciary capital services
Housing management
Financial planning services relating to building projects
Real estate procurement for others
Real estate consultancy
Estate agency
Management, financing, brokerage, rental, leasing and administration of real estate, property, apartments, commercial premises, offices, storage space and buildings
Rent collection
Land leasing services
Real estate procurement for others
Real estate management services relating to building complexes
Rental of buildings
Leasing and rental of commercial premises and salesrooms
Leasing of shopping premises
Leasing of shopping mall space
Letting of trade centres
Investment and real estate brokerage
Services in connection with confidential financial affairs
Building administration, including determining conditions and financing
Development of usage concepts for real estate with regard to financial matters (facility management)
Real estate management and brokerage, rental and leasing of real estate (facility management)
Mergers and acquisitions, namely financial consultancy with regard to the purchase or sale of companies and company shares
Real-estate valuations
Project and business auditing (due diligence) from a financial perspective
Mergers and acquisitions, namely financial consultancy in relation to buying and selling companies and company shares, hire, rental and leasing of articles in connection with providing the aforesaid services, included in this class
Consultancy and information in relation to the aforesaid services, included in this class
Evaluation (Financial -) [insurance, banking, real estate]
Real estate agency
Lending against security
Trusteeships
Surety services
Insurance brokerage
Art appraisal
Charitable fund raising
Arranging letting of real estate
Banking
Fund investments
Financial sponsorship
Real estate management
Stocks and bonds brokerage
Financial analysis
Currency trading and exchange services.
The mark was filed in class 37 with following description of goods:
Construction
Installation services of: Fire protection coatings, Door borders, Window fittings, Access control systems, Drainage tubing, Water pipes, irrigation schemes, pipe lines, Pipelines, Kitchen equipment, storage facilities, Road notice boards, shelves, cabinets, Technical and other apparatus and machines, office furnishings, Office fit outs, Generators, Photovoltaic installations, Solar installations, Geothermal installations, Installation of lightning conductors, Sun-protection installations, heat-protection installations, Materials for insulating, Lightning and lighting installation
Construction of real estate, apartments, commercial premises, offices, storage space and buildings and commercial real estate
Interior and exterior cleaning of buildings
Promotion (construction) of real estate projects
Building construction supervision
Building promoter services, Technical services for buildings
Construction consultancy
Building construction supervision
Building contractor services, Namely consultancy in relation to carrying out building projects, and implementing building projects, and conducting and implementing construction work
Structural engineering consultancy with regard to property development
Repair, Namely repair, maintenance and servicing of and on buildings and parts of buildings, and of installations in and on buildings
Repair, renovation, construction, maintenance and cleaning on and of real estate
Construction information
Infrastructural building and real estate management, namely technical on-site support, caretaker services
Installation of security systems
Consultancy in relation to the installation of security systems
Information services relating to installation of security systems
Installation of residential security apparatus
Installation, maintenance and repair of alarm systems, alarms, locking installations and safes
Consultancy relating to the installation, maintenance and repair of alarm systems, alarms, locking installations and safes
Installation of closed circuit television systems
Installation of video surveillance cameras
Installation of burglar alarms
Installation of burglar alarms
Installation, maintenance and repair of burglar alarms
Installation of fire detection systems
Maintenance and servicing of fire alarm systems
Advisory services relating to the installation of fire prevention equipment
Fire alarm installation and repair
Installation of security and safety equipment
Computer hardware and telecommunication apparatus installation, maintenance and repair
Re-inking and refilling of toner cartridges
HVAC (Heating, ventilation and air conditioning) installation, maintenance and repair
Alarm, lock and safe installation, maintenance and repair
Plumbing installation, maintenance and repair
Lift and elevator installation, maintenance and repair
Furniture maintenance and repair
Cleaning and care of fabric, textile, leather, fur and goods made thereof
Tyre maintenance and repair
Rental of cleaning and washing and drying machines and equipment
Glazing, installation, maintenance and repair of glass, windows and blinds
Building, construction and demolition
Cleaning and maintenance services
Extermination, disinfection and pest control
Cleaning services
Organisation of cleaning services
Car maintenance
Automobile repair
Vehicle maintenance
Fuel refilling services
Caretaker services
Rental of objects in connection with the providing of the aforesaid services, included in this class
Consultancy and information in relation to the aforesaid services, included in this class
None of the aforesaid services being related to the following fields: Telecommunications.
The mark was filed in class 39 with following description of goods:
Parking and storage of vehicles
Mail delivery and courier services
Parking place rental
Transport
Transportation and delivery of goods
Freight and cargo transportation and removal services
Rental of means of transportation
Towing and lifting services
Packaging and storage of goods
Filling of machines and containers
Loading and unloading of vehicles
Vehicle parking and storage
Unloading cargo
Freight warehousing
Collection of freight
Cargo tracking services
Transportation of freight
Loading of freight
Provision of information relating to the transport of freight
Clearance of incoming and outgoing mail, namely the handling, examination and transfer of mail on the basis of accompanying documents
Rental of objects in connection with the providing of the aforesaid services, included in this class
Consultancy and information in relation to the aforesaid services, included in this class
Removal services and planning
Removal services employing service providers, removal services using internal employees, Providing information relating to removal services.
The mark was filed in class 40 with following description of goods:
Treatment and transformation of materials, namely, Recycling and waste treatment, Metal treating, Woodworking and plastics processing
Food and beverage treatment
Customised manufacture and production, namely 3D printing, contract manufacture of bodies and chassis for vehicles, for others, Custom assembling of electronic components for communication devices, Oil-spill treatment
Customised modification of vehicles
Custom construction of machines
Assembly of products for others
Energy production
Printing, and photographic and cinematographic development
Duplication of audio and video recordings
Air and water conditioning and purification
Treatment of cocoa products, foodstuffs and milk products
Rental of objects in connection with the providing of the aforesaid services, included in this class
Consultancy and information in relation to the aforesaid services, included in this class.
The mark was filed in class 41 with following description of goods:
Education
Providing of training
Teaching
Entertainment
Operation of day care centres, nursery schools, crèches and children's clubs for teaching purposes
Child care
Conducting of sports events
Health and personal coaching or personal training
Providing of training, in particular fitness training, vibration training, back training or back exercises, relaxation training
Sporting and cultural activities
Training and further training consultancy
Providing on-line electronic publications, not downloadable
Library services
Coaching
Practical training [demonstration]
Electronic desktop publishing
Publication of texts, other than publicity texts
Publication of electronic books and documents, including on the internet
Organisation and conducting of sporting and cultural events
Arranging and conducting of conferences
Arranging and conducting of congresses
Arranging and conducting of symposiums
Personnel development by means of training and further training
Publication of printed matter (including in electronic form), except for advertising purposes
Arranging and conducting of seminars
Workshops (Arranging and conducting of -) [training]
Arranging and conducting of colloquiums
Organization of exhibitions for cultural or educational purposes
Writing of texts, other than publicity texts
Publishing printed matter, other than for advertising purposes
Rental of objects in connection with the providing of the aforesaid services, included in this class
Consultancy and information in relation to the aforesaid services, included in this class.
The mark was filed in class 42 with following description of goods:
Architectural and urban planning services
Engineering services
Testing, authentication and quality control
Design services
Building, namely the technical preparation of building projects
Technical consultancy and Providing of expertise, Relating to the following sectors: Real estate affairs, Design
Planning and technical consultancy with regard to the construction and equipping/furnishing of real estate
Technical building project planning and development
Conducting of scientific investigations in the organisational, operational and professional business field
Technical management of renovation measures
Management of room planning, namely planning of floor space and room occupancy
Technical advice relating to fire prevention
Consultancy in the field of energy-saving
Consultancy in the field of energy supply
Technical/ecological energy consultancy
Rental of objects in connection with the providing of the aforesaid services, included in this class
Consultancy and information in relation to the aforesaid services, included in this class, none of the aforesaid services in the telecommunications sector
Construction consulting.
The mark was filed in class 43 with following description of goods:
Rental of office equipment and conference and meeting rooms, operation of and services provided by day care centres, nursery schools, day-nurseries (crèches), crèches and children's clubs, included in class 43
Rental of furniture, linens and table settings
Development, preparation and making of decorations for pastries
Design and manufacture of plastic representations and decorations of sugar or chocolate
Rental of objects in connection with the providing of the aforesaid services, included in this class
Consultancy and information in relation to the aforesaid services, included in this class.
The mark was filed in class 44 with following description of goods:
Medical services
Health, hygienic and beauty care for human beings
Agriculture, horticulture and forestry services
Rental and leasing of objects in connection with the providing of the aforesaid services, included in this class
Consultancy and information in relation to the aforesaid services, included in this class.
The mark was filed in class 45 with following description of goods:
Project and business auditing (due diligence) from a legal standpoint
Legal services
Licensing of intellectual property
Security services for the protection of property and individuals
Guarding and surveillance of persons, buildings and valuable objects
Safety evaluation
Vetting services
Physical security consultancy
Information services relating to safety
Advisory services in relation to safety
Rental of security apparatus
Alarm monitoring services
Rental of alarms
Monitoring of burglar and security alarms
Guard services for preventing the intrusion of burglars
Fire prevention consultation
Rental of fire alarms
Monitoring fire alarms
Providing reconnaissance and surveillance services
Physical security consultancy
Security guard services
Security assessment of risks
Security guard services
Security services for buildings
Rental of safety equipment
Rental of security surveillance apparatus
Security inspection services for others
Securityand protection services
Security guard services for the protection of property and individuals
Monitoring of access and entrance areas
Security services for the physical protection of tangible property and individuals
Rental of clothing, Networking services, Physical security consultancy
Security guarding for facilities
Security services for the protection of property
Guard services
Security advisory services
Safety testing
Licence management, namely licensing of industrial property rights and copyrights, and for franchising concepts
Babysitting
Online social networking services
Provision of emotional support to families
Online social networking services accessible by means of downloadable mobile applications
Fostering of children
Foster care
Rental and leasing of objects in connection with the providing of the aforesaid services, included in this class
Consultancy and information in relation to the aforesaid services, included in this class.