OPPOSITION No B 2 762 782
Tesla Holding a.s., Poděbradská 56/186, 180 66 Praha 9 – Hloubětín, Czech Republic (opponent), represented by CMS Cameron McKenna LLP, Budapest, Károlyi utca 12, H-1053, Hungary (professional representative)
a g a i n s t
Rudler & Rocks GmbH, Bergwinkelsweg 23, 31171 Nordstemmen, Germany (applicant), represented by Christopher Beindorff, Königstr. 50, 30175 Hannover, Germany (professional representative).
On 25/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 762 782 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 484 397 for the figurative mark . The opposition is based on European trade mark registrations No 3 411 758 of the word mark ‘TESLA’, No 7 050 024 of the figurative mark , No 6 955 496 of the figurative mark and No 9 935 156 of the word mark ‘TESLA’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.
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.
According to Article 76(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, 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, 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 trade marks.
On 14/09/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. Upon request of the opponent this time limit was extended and expired on 19/03/2017.
The opponent did not submit any evidence concerning the reputation of the trade marks 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 it is based on this ground.
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 goods and services
The goods and services on which the opposition is based are the following:
European trade mark registration No 3 411 758
Class 9: Electrochemical current supplies; passive devices, especially resistors, thermal resistors, potentiometers, condensers, connectors, other connecting devices, small transformers, choke coils and other inductors, telecommunication relays, switches, printed wiring, protection elements, electric current interrupters; printed circuit cards (electric and printed), circuits (electric, integrated and printed); active devices, screens, X-ray tubes, other electron tubes, especially photomultiplier tubes, glow-tubes, microwave electron tubes, diodes, transistors, thyristors including diacs and triacs, other discrete semi-conductor components, crystal units; piezoceramic equipment and devices, radio frequency ceramics; electron valves, camera tubes, transmitting tubes, storage tubes, microwave tubes; microelectronic circuits, especially monolithic integrated circuits (ICs), hybrid ICs, switching ICs, storage ICs; optoelectronic devices and equipment, especially photoelectric devices, displays, electroluminescent panels, microwave components and circuits, magnetic a electromagnetic devices and equipment, ferrite elements, various electronic elements, especially filters, ultramicrotomes and microscopes, including electron microscopes; terrestrial, cable and satellite transmission equipment, local and integrated telecommunication network equipment, remote signalling, control and measuring devices, mobile phones and GSM and GPRS accessories, satellite data transmission antennas, receivers and decoders, radio-communication and TV devices and equipment, especially broadcast and TV transmitters, translators, antennas and antenna arrays, radio-relay links, radio stations, radio link and control devices, CCTV, terrestrial satellite link terminals, TV and radio signal receivers and distribution equipment, public radio and wire broadcasting systems, TV and broadcast studio equipment including sounding and acoustic equipment, TV OB and reporting vans, consoles, public address systems and interpreting equipment, mixing consoles and equipment, localisation equipment, measuring and regulation equipment including wireless systems; radar and navigation devices and aids, radars, data terminal installations; fibre-optic data transmission devices and equipment, lasers and laser telecommunication and measuring equipment, wire-bound communication systems accessories and equipment, especially telephone sets, public exchanges, intercommunication and conference equipment, communication facilities, videophones; magnetic cards, industrial electronics, especially electronic and electric signalling and interlocking systems and monitors as well as road and rail transport, shipping, air carriage and mine haulage equipment including acoustic and optical indication and signalling devices, electronic and electric burglar, fire and other alarm systems, manufacturing automation, regulation and production control machines and equipment including voice-controlled systems, detectors, sensors, actuators, control units, specialist electronic devices for textile industry, especially filament breakage sensors, textile machine control units, electric and electronic vehicle, ship and aircraft equipment and accessories; electronic and electric instruments, oscilloscopes and oscillograph, analyzers, especially electric and electronic recorders, indicating, measuring, monitoring and testing instruments and devices including non-electronic quantity measuring instruments, telecommunication measuring instruments, nuclear technology instruments and equipment, especially particle accelerators, radioactive emission indicator, measuring and monitoring instruments, nuclear resonance spectrometers, meteorological devices, ultrasonic devices, scientific and laboratory apparatus, clock generators, especially electronic metronomes, weighing equipment, vacuum apparatus, especially channel electron multipliers, vacuum interrupters, vacuum condensers, vacuum generation and measurement devices, mass spectrometers, ultravacuum devices, linear accelerators, microwave oscillators, coherent radiation generators; special electrical technology and electronics materials, especially semiconductors, ferromagnetic and highly pure chemicals; consumer electronics devices, especially radio and TV sets including the combination thereof with other equipment, monitors, displays and display devices including advertising display boards and LED display boards; video recorders, tape recorders, memo recorders, record players, magnetic tape recorders, video cameras, audio- a video-players including digital players, tuners and electronic amplifiers, cinematographic equipment, cameras, movie cameras, photo-electronic accessories, TV games and toys, consumer electronics accessories and parts, electromechanical, electromagnetic and electro-acoustic converters, microphones, loudspeakers, earphones and amplifiers, CD and DVD players, all-format sound, video and image recorders and players, cables; data collection, transmission, processing and storage machines and equipment and the combinations thereof, especially computers, servers, PDAs, notebooks, calculators, CPUs, microprocessors, computer components and hardware including sources and peripheries, graphic display units, modems, terminals, printers, copy machines, scanners, faxes and other office equipment, electronic diaries, indicators, interactive set-top boxes for data reception and sending; storage media, especially records, tapes, cassettes, discs, cards, chips; cables including optical cables and accessories; electronic teaching aids for polytechnic teaching and education including microcomputers and electronic kits and games; computer software including interactive multimedia applications and games, trainers and simulators of all types, especially for military and aviation use; irons and gooses of all kinds; components, parts and accessories of all the above mentioned products.
Class 10: Surgical, medical, dental and veterinary devices and instruments, artificial limbs, eyes and false teeth, orthopaedic aids, suture material, medical diagnostics display devices including but not only X-ray and radiological systems, computer tomography, magnetic resonance and spectroscopic systems, ultrasound medical apparatus, nuclear medical apparatus, positron-emission tomography apparatus, radiation therapy apparatus, medical intervention devices and medical diagnostic display, therapeutic and intervention system accessories including the accessories to and components of all the previous devices and systems; medical examinational, diagnostic, therapeutic and massage electronic devices and equipment including devices for the stimulation of living bodies functions.
Class 11: Electric light sources, especially bulbs, discharge lamps, fluorescent lamps, lighting installations, lighting fittings and their parts; all types of heat consumers based on both direct and indirect heating systems, especially electric and gas cookers, kitchen ranges, water heaters, kettles, heat guns, infra-red heaters, grills, sandwich-makers, toasters, welders, deep fryers, roast ovens, ovens, air heaters, electric fire, heater fans, air conditioners, water heat radiators for baths, curling irons, hair driers, microwave ovens, perm rods, washing machines; bubble baths, vibration massage machines; cooling systems, refrigerators, freezers, ice-cream makers, steam generators, drying, and ventilation systems, water distribution systems and sanitary facilities including but not only air-conditioning units, driers, dehumidifiers, humidifiers, range hoods and ventilation systems including accessories and components of all the previous products.
Class 28: Games and playthings, including electronic kits and games as well as musical playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees and other electronic Christmas decorations.
European trade mark registration No 7 050 024
Class 6: Tanks of metal, ironwork for doors, door fittings of metal, clips of metal for cables and pipes, water-pipe valves of metal, elbows for pipes of metal, swimming pools (metal structures), containers of metal, ironwork for windows, fittings of metal for furniture, containers of metal (storage, transport), pipes of metal, barrels of metal, ducts and pipes of metal for central heating installations, bottle caps of metal, steel pipes, drain pipes of metal, fittings of metal for windows, building panels of metal, metal fluid lines and tubes, penstock pipes (of metal), water-pipes of metal, lockers of metal, metal toolboxes, metal pipe clips, junctions of metal for pipes, fittings of metal for buildings, sealing caps of metal, metal nozzles, closures of metal for containers, pipes of metal for ventilation equipment, with express exclusion of keys of metal and locks of metal.
Class 7: Alternators, fittings for engine boilers, packing machines, pumps (machines), pump diaphragms, high pressure washers, feeders (parts of machines), conveyers (machines), belt conveyors, ejectors, gas-operated soldering irons, labellers (machines), filters (parts of machines, motors or engines), milling machines, generators of electricity, drive motors, other than for land vehicles, engines, other than for land vehicles, gas-operated soldering blow pipes, filter presses, carburetters, hammers (parts of machines), universal joints (cardan joints), compressors (machines), condensing installations, boiler tubes (parts of machines), metalworking machines, bread cutting machines, food processors (electric), kitchen machines, electric, included in this class, cultivators (machines), glue guns, electric, moulds (parts of machines), moulding machines, presses (machines for industrial purposes), fruit presses, electric, for household purposes, bearings (parts of machines), handling machines, automatic (manipulators), hand-held tools, mechanically operated, blowing engines, agitators, blenders, electric, for household purposes, grinders/crushers, electric, for household purposes, roller bridges, injectors for engines, washing apparatus, bottle washing machines, dishwashers, expansion tanks (parts of machines), de-aerators for feedwater, electromechanical apparatus for preparing beverages, instruments (parts of machines), sharpening machines, knives (parts of machines), electric knives, trimming machines, water separators, degreasing preparations for use in manufacturing processes, air suction machines, bending machines, rinsing machines, tin openers, electric, control cables for machines, engines or motors, control mechanisms for machines, engines or motors, steam engine boilers, bottle sealing machines, filling machines, bottle filling machines, propulsion mechanisms other than for land vehicles, washing machines (laundry), aerators, racket stringing machines, regulators (parts of machines), sewage pulverisers, cutting machines, blades (parts of machines), piston segments, separators, sieves (machines or parts of machines), lathes (machine tools), starters for motors and engines, bottle capping machines, shears, electric, drying machines, welding machines, electric, sparking plugs for internal combustion engines, glow plugs for diesel engines, electric whisks, electric blenders and whisks for household purposes, sifting machines, pistons for cylinders, valves (parts of machines), cartridges for filtering machines, boring heads (parts of machines), drilling machines, heat exchanger units (parts of machines), dusting apparatus, vacuum pumps (machines), air condensers, igniting magnetos, aerated water making apparatus, bottle stoppering machines, watering machines for agricultural purposes, ironing machines.
Class 8: Depilation apparatus, electric and non-electric, razors, electric or non-electric, electric manicure sets, knives, electric or non-electric, nail clippers, electric and non-electric, hairclippers for personal use.
Class 9: Accumulators, electric, aerials, audiovisual teaching apparatus, distribution machines, automatic, electric batteries, cells, lightning arresters, lightning conductors, buzzers, electric, electric coils, electromagnetic coils, choking coils (impedance), cyclotrons, bar code readers, time switches, automatic, chips (integrated circuits), galvanic cells, grids for batteries, solar batteries, contact lenses, optical lenses, readers (data processing equipment), remote control apparatus, electric installations for the remote control of industrial operations, electric apparatus for remote ignition, detectors, diagnostic apparatus, not for medical purposes, slide projectors, optical lamps, diffraction apparatus (microscopy), dictating machines, magnetic disks, compact discs (audio-video), luminous or mechanical road signs, electric wires, digital video disc players, electric cables, electric connections, welding apparatus, electric, electric devices for attracting and killing insects, hair-curlers, electrically heated, electrified fences, electronic pens (display units), electronic notice boards, thermionic lamps and tubes, facsimile machines, respirators for filtering air, fluorescent screens, cameras (photography), galvanic cells, galvanizing apparatus, electroplating apparatus, apparatus for changing record player needles, record players, hands-free sets for telephones, voting machines, speaking tubes, chronographs, time recorders, indicators (electricity), inductors (electricity), integrated circuits, intercommunication apparatus, coaxial cables, junction sleeves for electric cables, starter cables, fibre optic cables, cinematographic cameras, batteries for pocket lamps, torches, integrated circuit cards (smart cards), cathodes, containers for microscope slides, collectors, electric, electric apparatus for commutation, terminals (electricity), capacitors, connectors (electricity), contacts, electric, photocopiers (photostatic, electrostatic, thermic), make-up removing appliances, electric, armatures (electricity), covers for electric outlets, darkroom lamps (photography), lasers, not for medical purposes, magnetic data media, magnetic cards (encoded), magnetic encoders, audio cassette recorders, video recorders, beacons, luminous, megaphones, converters, electric, microwave equipment, microprocessors, modems, chargers for electric batteries, furniture especially made for laboratories, signals, luminous or mechanical, navigational instruments, optical data media, notebook computers, objectives (lenses) (optics), screens, branch boxes (electricity), electric resistances, anti-interference devices (electricity), limiters (electricity), optical discs, optical apparatus and instruments, oscillographs, personal stereos, lighting ballasts, ozonators, soldering irons, electric, luminous or mechanical signalling panels, computer peripherals, projection screens, plotters, calculating machines, computers, computer memories, fuses, semiconductors, printed circuits, cases fitted with dissecting instruments (microscopy), processors (central processing units), projection apparatus, cathodic anti-corrosion apparatus, cassette players, compact disc apparatus, portable telephones, voltage surge protectors, circuit breakers, audio and video receivers, sound reproduction apparatus, radars, radios, radiotelephony sets, regulating apparatus, electric, electric light dimmers, rheostats, dimmer switches (electric), heat regulating apparatus, electric relays, rheostats, loudspeakers, vehicle radios, switchboards, control panels (electricity), satellite navigation apparatus, transmitters of electronic signals, sirens, distribution boxes (electricity), image sensors, scanners (data processing), recorded computer software, sonars, circuit closers, connectors for electric lines, masts for wireless aerials, welding electrodes, electric welding apparatus, flashing lights (luminous signals), junction boxes (electricity), telephone wires, telephone apparatus, TV sets, transformers (electricity), transistors (electricity), automatic turnstiles, particle accelerators, scales, electricity conduits, video cameras, videophones, conductors, electric, switches, electric, transmitting sets (telecommunications), transmitters of electronic signals, high-frequency apparatuses, teaching apparatus, data processing equipment, radiotelegraphy sets, sockets and other contacts (electric connections), electric, answering machines, amplifying tubes, amplifiers, flashlights (photography), electric irons, with express exclusion of electronic keys locks; access control devices and alarms.
Class 11: Globes for lamps, mixer taps for water pipes, searchlights, safety lamps, purification installations for sewage, electric coffee percolators, electric lamps, blankets, electric, not for medical purposes, electrically heated carpets, rugs, filters for air conditioning, filters for drinking water, fountains, deep-fryers, electric, hydrants, cooling apparatus and equipment, ice boxes, ionising apparatus for the treatment of air, electric appliances for making yoghurt, shower booths, stoves, pocket searchlights, coffee machines, electric, air-conditioning apparatus, solar collectors (heating), flushing tanks, electric kettles, bath installations, cooking utensils, electric, laboratory lamps, refrigerating cabinets, refrigerating appliances and installations, electrically heated footmuffs, steam facial apparatus (saunas), nuclear reactors, lamp mantles, ventilation hoods, desalinisation plants, hot water heating installations, lighting apparatus and installations, luminous tubes for lighting, bakers' ovens, urinals (sanitary fixtures), polymerisation installations, air cooling apparatus, griddles (cooking appliances), radiators (heating), regulating and safety accessories for water apparatus, sanitary apparatus and installations, flares, sterilisers, air purifying apparatus and machines, drying apparatus and machines, lamps, light reflectors (lights), automobile lights, heat accumulators, hot air apparatus, autoclaves (electric pressure cookers), pressure water tanks, toasters, microwave ovens (cooking apparatus), cooking apparatus and installations, fans (air-conditioning), ventilation (air-conditioning) installations and apparatus, filaments for electric lamps, hair driers, water distribution installations, lighting apparatus for vehicles, discharge tubes, electric, for lighting, heat exchangers (not parts of machines), water purifying apparatus and machines, disinfectant apparatus, water supply installation, air filtering installations, water filter kits, cooling installations for water, water purification installations, installations for conditioning air, water conduit installations, watering installations, automatic, water softening installations, light bulbs.
Class 21: Refrigerating containers, electric combs, electric toothbrushes, bottles, containers, tumblers, beakers and shallow containers, polyethylene terephthalate bottles, containers and tanks including water containers and tanks, drinks bottles and containers.
Class 42: Computer programming, computer system design, technical project studies, computer software design.
European trade mark registration No 6 955 496
Class 7: Machines, gear boxes, transmission components and drive mechanisms (except for land vehicles), transporters, conveyers, motors and engines (except for land vehicles), piston rings, carburetors, ignition glow plugs, ignition coils and feeder cables, pumps and filters, cleaning machines, including for high-pressure cleaning, bearings, springs, valves as parts of machines, electricl engines, electric motors, electricity generators, wire distributers, roll-up frames, cable tractors, mechanical stands for industry, machine tools, machine cutting instruments, milling machines, shears, knives, drills, turning lathes, chucks, saws, punching machines, borers, machines for working of metal, plastic, wood and waste thereof, moulds, templates, instruments and other tools, sharpening machines, grinding wheels, planing tools, welding machines, sealing apparatus, oxyacetylene burners, steam engine boilers, pneumatic control apparatus for mechanization, robotization and rationalization of technological processes, manipulators, robots, construction machines, disengaging mechanisms as parts of machines, pulleys, excavators, lifting and hoisting apparatus, ground, geological, agricultural, forestry and horticultural machines, agricultural instruments, machines for packing technology, packing machines, labeling machines, paint markers, spray guns, pneumatic punching and binding machines, shredding machines, textile machines, sewing machines, electrotechnical products for industry and households, in particular rotary appliances including universal and special-purpose kitchen appliances (in particular electric grinders, whisks, dough kneaders, fruit presses and separators, knife sharpening machines, meat cutters, graters, potato peelers, food processors, blenders, machines for chopping, slicers, can openers), mechanical parts and components, conversion machines, cranes, current generators, repair apparatus, drill fixtures, drill points, drill heads, instrument fillings, filtering machines, fuel conversion apparatus for internal-combustion engines, electric motors except for land vehicles, turbines except for land vehicles, drive mechanisms except for land vehicles, pumps (parts of machines, motors and engines), valves, engine, motor and machine ignitions, turbines (hydraulic), turbo compressors, textile machines, cleaning appliances (in particular electric vacuum cleaners, parquet polishers, shampooers, beaters, furniture and parquet polishers, fully automatic washing machines, spin dryers and tumble dryers, dishwashers), steam presses, machines for home workshops, including electric cutting machines, including accessories and spare parts for all the aforesaid goods; electro-chemical current sources, machines for automation, regulation and control of industrial production, including voice-operated apparatus, all the aforesaid included in this class.
Class 9: Passive components, in particular resistors, thermistors, potentiometer, condensers, plug-in connectors, small transformers, chokes and other magnetos, communication relays, circuit closers, printed circuits, fuse components, current interrupters, printed wiring boards (electric and chip), circuits (electric, integrated and chip), active components, screens, X-ray tubes, other electron tubes, especially photomultipliers, glow switch lamps, microwave electron tubes, diodes, transistors, thyristors, including DIAC and TRIAC, other discrete semiconductors components, crystal units, piezoceramic apparatus and components, high-frequency ceramics, vacuum tubes, image pick-up tubes, transmitting tubes, memory tubes, microwave tubes, microelectronic circuits, especially monolithic integrated circuits, hybrid integrated circuits, switching integrated circuits, memory integrated circuits, processors (CPUs), opto-electric components and apparatus, in particular photoelectric components, flat screens, electroluminescent panels, microwave elements and circuits, magnetic and electromagnetic components and apparatus, filters (photography), microscopes, apparatus for terrestrial, cable and satellite transmission of information, apparatus for local and integrated telecommunication networks, apparatus for long-distance signalization, control, mobile telephone apparatus and accessories using the GSM network, apparatus and devices for data transmission by optical fibre, laser telecommunication apparatus, aerials, receivers and decoders for satellite data transmission, equipment and apparatus for wire communication technology, in particular telephones, telephone exchanges, dispatch and meeting room facilities, communication devices, videophones, apparatus and devices for radio communication and television, in particular radio and television transmitters, transformers, aerials and aerial systems, radio-relay connections, radio stations, radio connection and control apparatus, closed-circuit television, land terminals for satellite connections, apparatus for reception and distribution of television and radio signals, apparatus and devices for local radio and wire broadcasting, television and radio studio equipment, including sound and acoustic apparatus, control desks, broadcaster and interpreter devices, mixing consoles including accessories, magnetic cards, radio location and navigational instruments and tools, data stations, industrial electronics equipment, in particular electronic and electric signalling, security and checking (supervision) apparatus and apparatus for road, railway, naval, air and mining transport, including sound and optical indicating and signalling devices, electronic and electric security apparatus against theft, fire and similar security alarms, actuators, control units, special-purpose electronic devices for the textile industry, in particular fibre-break detectors, control units for textile machines, single-purpose machines and equipment for production of electronic and electric apparatus and components, in particular electron lithos, electronic and electric apparatus, oscilloscopes and oscillographs, analytical apparatus, in particular electric and electronic registration, indication, control and test apparatus and devices, telecommunication measuring devices, apparatus and devices for nuclear technology, in particular particle accelerators, apparatus for indication, measuring and control of radioactive emissions, nuclear resonance spectrometers, meteorology instruments, ultrasound apparatus, scientific and laboratory apparatus, impulse generators, in particular electronic metronomes, weighing apparatus, vacuum devices, in particular vallecular electron multipliers, vacuum interrupters, vacuum condensers, devices for vacuum development and measuring, substance spectrometers, ultra-high vacuum devices, linear accelerators, microwave oscillators, generators of coherent radiation, microprocessors, electric and electronic equipment and accessories for vehicles, ships and aircrafts, special-purpose materials for use in electrical engineering and electronics, in particular semiconductors, ferromagnetic, highly purified chemical substances, consumer appliances, in particular radio and television receivers, including combinations thereof with other devices, video display screens and flat screens, video recording machines, dictating machines, record players, reel-to-reel and cassette tape recorders, camcorders, reel-to-reel and cassette tape players, laser digital players, tuners and electronic amplifiers, electronic musical instruments, electronic clocks of all kinds, filmmaking devices, cameras (photography), video cameras, photo-electronic accessories, television games and playthings, accessories and components for consumer appliances, in particular electro-mechanical, electro-magnetic and electro-acoustic transducers, microphones, loudspeakers, earphone and amplifiers, compact disc and digital video disc players, cables, recording media, in particular records, tapes, cassette tapes, discs, machines and devices for collection, transmission, processing and storage of data and combinations thereof, in particular personal computers, server computers, computer software and hardware including interactive multimedia software applications, calculators, modems, terminals, printers, photocopying machines, scanners, fax machines and other office devices, computer peripheral devices, cathode ray tube displays, floppy disc drives, memory cards, electronic organizers, indicators, electronic tools for polytechnic education and tuition services, including microcomputers and electronic construction kits and games, interactive set-top boxes for receiving and sending data, optical cables and accessories, components thereof, parts, components and accessories of all the aforesaid goods, flat irons; electrically heated curling tongs, all the aforementioned goods included in this class.
Class 11: Electric lighting sources, in particular light bulbs, discharge tubes, fluorescent light tubes, illumination devices, lights and components thereof, all heating appliances based on direct and indirect heating, namely electric and gas cookers, cooking stoves, water heaters, kettles, space heaters, radiant heaters, grills, sandwich makers, toasters, welding machines, deep fryers, fryers, cooking ovens, air heaters, electric fires, hot-air ventilators, air conditioners, heating bodies for baths, hair drying apparatus, microwaves, permanent wave appliances, whirlpool baths, refrigeration technology, refrigerators, freezers, ice-cream machines, apparatus for steam generatoring, drying, ventilating, water supply and air-conditioning clothes dryers, dehumidifiers, humidifiers, oven hoods and ventilation systems, including accessories and components for all the aforesaid, all the aforesaid being included in this class.
European trade mark registration No 9 935 156
Class 9: Computer hardware; integrated circuits; semiconductors; computer chipsets; micro-processors; computer software for operation of integrated circuits, semiconductors, computer chipsets and micro-processors; instructional manuals provided with the aforementioned goods; electronic publications, namely, books, magazines, newsletters and manuals regarding computer hardware, integrated circuits, semiconductors, computer chipsets and microprocessors.
Class 41: Educational services, namely, training in the use of computers, computer hardware, computer software, computer systems, computer peripherals, and computer networks; arranging and conducting of educational conferences in the fields of computing and information technology.
Class 42: Computer hardware consulting services; computer hardware design and development services; integrated circuit consulting services; integrated circuit design and development services; computer software consulting services in the fields of computing and information technology; computer programming for others; on-line services in connection with computer hardware and software, namely, technical support services, namely, troubleshooting of computer hardware and software problems; updating computer software for others in the fields of computing and information technology; computer software development in the fields of computing and information technology; integration of computer systems; computer systems analysis; computer diagnostic services.
The contested goods are the following:
Class 34: Lighters of precious metal; lighters for smokers; lighters not of precious metal [not for automobiles].
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.
The contested lighters of precious metal; lighters for smokers; lighters not of precious metal [not for automobiles] are smokers' articles. The opponent’s goods are metal materials for building and construction, non-electric cables and wires of common metal and metal containers (Class 6), machines, machine tools, motors and engines (Class 7), hand tools and implements and razors (Class 8), all kinds of electric apparatus ranging from simple electronic devices such as relays to highly specialised equipment such as nuclear resonance spectrometers (Class 9), surgical, medical, dental and veterinary apparatus, instruments and articles generally used for the diagnosis, treatment or improvement of function or condition of persons and animals (Class 10), apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes (Class 11), household or kitchen utensils and containers, combs and brushes (Class 21), games, toys and playthings, gymnastic and sporting articles and decorations for Christmas trees (Class 28), educational services (Class 41) and design and development of computer hardware and software (Class 42). These goods and services do not only differ in nature, they also serve different purposes, none of the opponent’s goods and services sharing the contested goods purpose of lighting pipes, cigars or cigarettes. They are also neither interchangeable or imperative for the use of the other and, therefore, not in competition or complementary. The mere fact that they may be found in the same sales outlets, e.g. department stores, is not sufficient to conclude that these goods are similar, since the average consumer will not think that they originate from the same company. Consequently, the Opposition Division considers that they are dissimilar.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly 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
|
Benjamin WINSNER |
Adriana VAN ROODEN |
Frédérique SULPICE |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.