OPPOSITION No B 2 145 327
T-2 d.o.o. – v stečaju, Verovškova ulica 64°, 1000 Ljubljana, Slovenia (opponent), represented by Marjan Delić, Grajska ulica 3, 3210 Slovenske Konjice, Slovenia (professional representative)
a g a i n s t
EE Limited, Trident Place, Mosquito Way, Hatfield, Hertfordshire AL10 9BW, United Kingdom (applicant), represented by Bird & Bird LLP, 12 New Fetter Lane, London, EC4A 1JP, United Kingdom (professional representative).
On 24/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 145 327 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 172 848, namely against all the goods and services in Classes 9, 16, 35, 37, 38, 41, 42 and 45. The opposition is based on Slovenian trade mark registrations No 200 871 072, No 200 770 585, No 200 670 666, No 200 670 320 and No 200 670 309 and international trade mark registrations No 979 416, No 979 415, No 979 414 and No 979 413 all designating Germany, Italy and Austria. The opponent invoked Article 8(1)(b) EUTMR.
SUBSTANTIATION
International trade mark registrations No 979 416, No 979 415, No 979 414 and No 979 413 all designating Germany, Italy and Austria
According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall 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, the Office shall 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) EUTMIR, within the period referred to above, the opposing party shall 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 particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
On 21/03/2013, the Office sent a communication to the opponent giving it two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was subsequently extended (following a request for an extension of the cooling-off period, a request for suspension and an extension of the time limit to submit further evidence) and expired on 07/09/2016. In accordance with the Office’s practice in force at that time, the Office provided the opponent, along with the invitation to complete the opposition, with an information sheet that contained guidance on the proceedings and the means of evidence. Specifically, it refers to the particulars to be proven if the earlier trade mark is anything other than an EUTM, which is the case in relation to earlier international trade mark registrations No 979 416, No 979 415, No 979 414 and No 979 413.
In the present case, neither the notice of opposition nor any of the opponent’s other submissions was accompanied by any evidence as regards earlier international trade mark registrations No 979 416, No 979 415, No 979 414 and No 979 413 all designating Germany, Italy and Austria on which, inter alia, the opposition is based.
According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR 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 shall be rejected as unfounded.
Therefore, the opposition must be rejected as unfounded, as far as it is based on international trade mark registrations No 979 416, No 979 415, No 979 414 and No 979 413.
Slovenian trade mark registration No 200 770 585
Earlier Slovenian trade mark registration No 200 770 585 was substantiated by the opponent within the substantiation period, but it had expired on 18/04/2017, that is, before the date of the decision. No renewal certificate was submitted by the opponent.
However, for reasons of procedural economy, the Opposition Division finds it appropriate not to request evidence of renewal of earlier Slovenian trade mark registration No 200 770 585, as it would not change the outcome of the decision and because there would also be no likelihood of confusion in relation to this mark. The examination of the opposition will proceed as if earlier Slovenian trade mark registration No 200 770 585 has been renewed for all the services invoked, which is the best light in which the opponent’s case can be considered.
Therefore, the opposition will be examined in relation to the opponent’s Slovenian trade mark registrations No 200 871 072, No 200 770 585, No 200 670 666, No 200 670 320 and No 200 670 309.
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.
- The signs
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Earlier trade marks |
Contested sign |
The relevant territory is Slovenia.
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).
All of the earlier marks contain the verbal element ‘T2’ in slightly stylised white, orange or black characters, with the ‘T’ in upper case. The verbal element is placed on a white, black or orange (in various shades) background, formed of two circles next to each other on a horizontal line and joined together, as if they are overlapping. In earlier trade marks No 4 and No 5, the two conjoined white circles are placed in the middle of an orange or black rectangle (i.e. of the same colour as the verbal elements of these marks).
The verbal element ‘T2’ will conceptually be perceived as such, namely as the letter ‘T’ and the number ‘2’. However, neither the letter ‘T’ nor the number ‘2’ has any meaning in relation to the services in question, namely services in Classes 35, 37, 38, 41, 42 and 45, and therefore they have an average degree of distinctiveness.
Although the two overlapping circles could be perceived as resembling a pair of binoculars viewed from the front, the figurative elements of the earlier marks are not likely to trigger any specific semantic associations on the part of the relevant public. Rather, they will be perceived as decorative devices used to embellish the verbal element of the marks, ‘T2’. Given their low distinguishing power and their secondary role in the earlier marks, the impact of the figurative elements is limited in the overall impressions produced by the earlier marks.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
The contested sign is a device formed by a turquoise line, depicting what could be perceived as the outline of two vertically overlapping circles, but with the lines of the overlapping parts of the circles omitted. Although this device could be perceived to resemble the outline of the number ‘8’, it is concluded that this device is not likely to trigger any specific semantic associations on the part of the relevant public. In relation to the goods and services in question, it has an average degree of distinctiveness.
The earlier marks have no element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide inasmuch as the shape of the contested sign is similar to the shape of the outline of the figurative element of earlier marks No 1-3 and of part of the figurative element of earlier marks No 4-5, namely the outline of two circles in a rectangle. However, there are striking differences between the marks in all other aspects. The earlier marks depict two solid black, orange or white horizontally overlapping circles (in earlier marks No 4 and No 5, these circles are in the middle of a black or orange rectangle) and the contested sign depicts a turquoise outline of what might be perceived as two vertically overlapping circles. Unlike the contested sign, the devices of the earlier marks play a secondary role in the marks, as they will be perceived merely as embellishments and backgrounds for the verbal element ‘T2’. The contested sign has no verbal elements, while the earlier marks contain the combination ‘T2’, which plays an independent role in those marks.
As the signs coincide in only irrelevant aspects, as described above, and as the verbal element ‘T2’ in the earlier marks further differentiates the signs, it is concluded that the signs are visually dissimilar.
Aurally, purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.
Conceptually, while the public in the relevant territory will perceive the verbal element in the earlier marks as described above, the other sign lacks any 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 coincide in only irrelevant aspects, they are dissimilar.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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José Antonio GARRIDO OTAOLA |
Cecilie Leth BOCKHOFF |
Michele M. BENEDETTI-ALOISI |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.