OPPOSITION No B 2 249 897
Cray Inc., 901 Fifth Avenue, Suite 1000, Seattle, Washington 98164, the United States of America (opponent), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, Birmingham B16 8QQ, the United Kingdom (professional representative)
a g a i n s t
Proconsult Justyna Wittbrodt, Ul. Zielone Wzgórze 46, 80-283 Gdańsk, Poland (holder), represented by Kancelaria Patentowo – Prawna Grażyna Pomianek, Subislawa 23 C lok. 7, 80-354 Gdańsk, Poland (professional representative).
On 02/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 249 897 is partially upheld, namely for the following contested goods:
Class 9: Electronic apparatuses and instruments for the recording, input, storage, processing and transmission of data, digital data, digital music; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers.
2. International registration No 1 141 405 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 141 405, namely against some of the goods in Class 9. The opposition is based on European Union trade mark registration No 70 490. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The holder requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 70 490.
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
The relevant date (first republication of the contested international registration plus six months) is 04/07/2013. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 04/07/2008 to 03/07/2013 inclusive.
In its observations of 11/11/2014, the opponent limited the basis of the opposition to some of the goods in Class 9, renouncing the rest of the goods and services in Classes 16, 37 and 42 mentioned in the notice of opposition. Moreover, earlier European Union trade mark registration No 70 490 was the subject of a cancellation procedure in which the list of goods in Class 9 was limited to certain goods as listed below.
The evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 9: Computers; computer programs and software; computer programs recorded in computer-accessible form, memories, disc drives.
According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 11/07/2014, according to Rule 22(2) EUTMIR, the Office gave the opponent until 11/09/2014 to submit evidence of use of the earlier trade mark. The deadline was extended until 11/11/2014. On 11/11/2014, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is, in particular, the following:
Annexes 1-4: extracts from The Register, dated 02/02/2012, 04/01/2013, 05/02/2010 and 05/01/2008, mentioning the mark ‘CRAY’ in relation to supercomputers. The Register is a UK technology news and opinion website co-founded in 1994 by Mike Magee and John Lettice and is published by Situation Publishing Ltd. In 2013, The Register had 1.8 million readers in the UK and just under 3 million readers in the USA.
Annex 5: an extract from Tech Week Europe, dated 08/11/2012, mentioning the mark ‘CRAY’ in relation to supercomputers. Tech Week Europe is an online magazine published by NetMediaEurope. NetMediaEurope publishes a portfolio of websites aimed at IT experts, with more than 40 sites across Europe (e.g. targeting IT professionals).
Annexes 6-7: extracts from The Register, dated 08/11/2012 and 12/11/2012, mentioning the mark ‘CRAY’ in connection with the design and manufacture of supercomputers. They discuss the TOP500 Project TOP500 List of November 2012 and emphasise that a supercomputer under the ‘CRAY’ brand is technically the best available on the supercomputer market. The extracts indicate that the opponent’s mark ‘CRAY’ is synonymous with supercomputers.
Annex 8: TOP500 Project top 10 lists dated November 2008 to November 2012. The TOP500 Project was launched in 1993 to improve and update the Mannheim supercomputer statistics, which had been in use for seven years. The TOP500 Project uses a benchmark to rank supercomputer systems across the world to decide whether or not they qualify for the TOP500 List. The TOP500 Project is considered the definitive list in the international (and therefore European) supercomputer industry. The TOP500 Project mentions the opponent as a leading player in the global supercomputer market that continues to manufacture and retail successful supercomputers under the ‘CRAY’ brand.
Annex 9: a journal article entitled ‘Supercomputers – prestige objects or crucial tools for science and industry?’ by Hans W. Meuer and Horst Gietl, dated 18/03/2012, mentioning the mark ‘CRAY’ in connection with the design and manufacture of supercomputers. This article is a revised and extended version of the Lorraine King Memorial Lecture that Hans Werner Meuer was invited to give by Lord Laird of Artigarvan at the House of Lords, London, on 18/04/2012.
Annexes 10-11: extracts from Tech Week Europe, dated 13/11/2009 and 16/11/2009, mentioning the mark ‘CRAY’ in relation to supercomputers.
Annex 12: an extract from The Register, dated 21/03/2011, mentioning the mark ‘CRAY’ in connection with the design and manufacture of supercomputers.
Annex 13: a press release, dated 23/04/2009, from the Partnership for Advanced Computing in Europe (PRACE) about a workshop devoted to a supercomputer model manufactured by the opponent under the ‘CRAY’ brand.
Annex 13A: an extract from The Register, dated 25/05/2010, mentioning the mark ‘CRAY’ in relation to supercomputers.
Annex 14: the opponent’s brochure for model XE6 supercomputers, dated 2010.
Annex 15: the opponent’s brochure for model XT5 supercomputers, dated 2009.
Annex 16: the opponent’s brochure for model XT6m supercomputers, dated 2010.
Evidence concerning specific countries
Germany
Annex 17: an invoice from the opponent to the University of Hanover, dated 17/12/2012.
Annex 18: an invoice from the opponent to the Zuse Institute Berlin, dated 17/12/2012.
Annex 19: a press release issued by the opponent, dated 17/12/2012, outlining a multimillion-pound contract awarded to the opponent by a German organisation within the supercomputing industry for the delivery of XC30 systems.
Annex 20: an extract from The Register, dated 10/01/2013, mentioning the mark ‘CRAY’ in connection with the design and manufacture of supercomputers.
Annex 21: a news feature, undated, from the website of the Zuse Institute Berlin, which is one of the opponent’s clients, as demonstrated by the invoice in Annex 18. The article discusses the procurement and contract negotiations between the Zuse Institute Berlin and the opponent for the opponent to supply supercomputers to the Zuse Institute Berlin and the specifications of the opponent’s supercomputer model.
Annex 22: an extract from ITPRO, a comprehensive technology news and reviews website for IT professionals, dated 09/11/2012. This evidence refers to various models of supercomputers. Reference is made to the High Performance Computing Centre, Stuttgart (HLRS).
Annex 23: a news article by the HLRS of the University of Stuttgart, dated 12/06/2009. It refers to the installation of a supercomputer manufactured by the opponent at the HLRS. The evidence demonstrates that the mark ‘CRAY’ is associated with the opponent in the German supercomputing industry.
Annex 24: a press release, dated 22/05/2012, issued by the Partnership for Advanced Computing in Europe (PRACE) about the award of 120 million core hours on a supercomputer based in Germany, manufactured by the opponent. PRACE offers world-class computing and data management resources and services through a peer review process. PRACE also seeks to increase the number of European users of high-performance computers. According to the opponent, this third-party evidence demonstrates use of the mark ‘CRAY’ in connection with supercomputers and demonstrates that the mark ‘CRAY’ is synonymous with the opponent in the supercomputing industry in Germany.
Annex 25: an article, undated, by the Gauss Centre for Supercomputing (GCS) about the anniversary of the inauguration of a supercomputer manufactured by the opponent at the HLRS of the University of Stuttgart. This evidence refers to a supercomputer called Hermit (which is a nickname of the Cray XE6 system) based at the HLRS. The supercomputer in question is a model designed and manufactured by the opponent under the ‘CRAY’ brand.
Annex 26: an extract from The Register, dated 26/10/2014. This third-party evidence refers to the purchase of a supercomputer by the HLRS from the opponent and to future upgrades to the supercomputer.
Annex 27: a news article, dated 28/02/2012, by the HLRS. It refers to the installation of a supercomputer manufactured by the opponent at the HLRS of the University of Stuttgart.
Annex 28: a news article, dated 28/03/2011, by the HLRS. It refers to the University of Stuttgart hosting a seminar devoted entirely to learning about one of the opponent’s products.
Annexes 29-32: invoices from the opponent to the University of Stuttgart, dated 25/03/2011, 15/06/2011, 22/12/2011 and 15/01/2012.
Annex 33: a press release issued by the University of Duisburg-Essen, dated 16/07/2010. It refers to the installation of a supercomputer manufactured by the opponent that has been installed at the University of Duisburg-Essen.
Annex 34: an invoice from the opponent to the University of Duisburg-Essen, dated 14/12/2009.
Annex 35: an extract from the TOP500 Project, dated 2010, about the University of Duisburg-Essen. It contains information regarding the supercomputer systems sold to the University of Duisburg-Essen.
Annex 36: a press release, dated 09/02/2010. This article states that the opponent has successfully manufactured and installed one of its supercomputers at the University of Duisburg-Essen.
Sweden
Annex 37: an extract from The Register, dated 01/06/2010. It mentions the purchase of a supercomputer by the Royal Institute of Technology (KTH) in Sweden.
Annex 38: a press release issued by the KTH, dated 07/07/2010.
Annexes 39-40: press releases issued by the KTH, dated 18/10/2010 and 20/11/2012. They refer to the KTH hosting a seminar devoted entirely to learning about one of the opponent’s products.
Annex 41: a press release issued by the KTH, dated 22/02/2011. It refers to the fact that the installation of the opponent’s supercomputer is part of an ongoing programme of the Swedish National Infrastructure for Computing.
Annex 42: a job advertisement for the Swedish E-Science Research Centre, dated 23/05/2011. According to the opponent, this job advertisement mentions that the role involves working with the largest supercomputer in the Nordic countries (at the time of publication).
Annex 43: an extract from the website of the KTH, undated.
Annex 44: an extract from the website of the KTH, dated 22/06/2010. It details the completion of a contract between the opponent, the KTH and South Pole AB, a Swedish company that provides software solutions based on Linux (a type of computer software), for the installation of a supercomputer manufactured by the opponent at the KTH.
Annex 45: an invoice from the opponent to South Pole AB, dated 11/02/2011.
Annex 46: a press release issued by the opponent, referring to the 2010 International Supercomputing Conference on 01/06/2010 in Hamburg, Germany. It refers to the installation of one of the opponent’s products at the KTH.
Finland
Annex 47: a press release, dated 03/07/2008, issued by the German Scientific Computing Initiative about a selection of lectures and seminars related to the opponent’s products in Finland and Sweden, the seminars being hosted by PRACE.
Annex 48: a news article, dated 08/08/2010, on the 2010 Go Games based in Finland. Go is a board game for two players that originated in ancient China more than 2 500 years ago. According to the opponent, this document proves that its products were used outside the supercomputing industry in a games tournament in Finland.
Annex 49: an article from ITPRO, dated 09/09/2012. The article refers to various models of supercomputers. The evidence also demonstrates that an academic institution in Finland, the Finnish IT Centre for Science (CSC), has purchased goods bearing the ‘CRAY’ mark from the opponent.
Annex 50: news updates, dated 22/12/2009, from the Danish Centre for Scientific Computing, mentioning that the mark ‘CRAY’ is synonymous with supercomputers across Finland and Sweden.
Annex 51: a press release issued by the Leibniz Supercomputing Centre of the Bavarian Academy of Sciences and Humanities (European supercomputing centre in Garching, near Munich, Germany), dated 15/06/2011. It promotes a summer school on supercomputers (including the opponent’s products) in Finland.
Annexes 52-53: invoices from the opponent to the Ministry of Education, Finland (CSC), dated 05/02/2009 and 16/12/2008.
Annex 54: a press release issued by the opponent, dated 29/10/2008. According to the opponent, this evidence demonstrates that its mark ‘CRAY’ is known in Finland.
Annex 55: a press release issued by the opponent, dated 09/07/2012. According to the opponent, this evidence demonstrates that its mark ‘CRAY’ is known in Finland.
United Kingdom
Annex 56: a press release issued by the Edinburgh Parallel Computing Centre (EPCC), dated 17/11/2011. According to the opponent, this evidence demonstrates that the opponent is known in the UK for the design and manufacture of supercomputers (which are the goods in Class 9 in question). This article makes reference to the opponent’s CRAY XE6 model, nicknamed ‘HECToR’, at the EPCC. It also demonstrates the type of specialist consumer that purchases the opponent’s products under the ‘CRAY’ brand.
Annex 57: a press release issued by the University of Reading, dated 20/11/2012. This document outlines a selection of lectures and seminars in the United Kingdom relating to the opponent’s products. According to the opponent, it also demonstrates the type of specialist consumer that purchases the opponent’s products under the ‘CRAY’ brand. The seminar was funded by PRACE.
Annex 58: a press release issued by the University of Edinburgh, dated 06/01/2010. This document outlines a selection of lectures and seminars in the United Kingdom relating to the opponent’s products. According to the opponent, it also demonstrates the type of specialist consumer that purchases the opponent’s products under the ‘CRAY’ brand. The seminar was funded by PRACE.
Annex 59: an extract from the EPCC’s website, undated. According to the opponent, it has been known as a designer and manufacturer of supercomputers in the United Kingdom since at least as early as 1994, and has since then been selling (and installing) these products under the mark ‘CRAY’ to consumers in the United Kingdom.
Annex 60: a press release issued by the opponent, dated 09/05/2011. According to the opponent, this document demonstrates that its mark ‘CRAY’ is known in Scotland.
Annex 61: an invoice from the opponent to the Engineering and Physical Sciences Research Council, dated 11/04/2011.
The invoices, the press articles and the press releases show that the place of use is the European Union. This can be inferred from the language of the documents (English), the currency mentioned (euros) and some addresses in the European Union. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
The opponent requested to keep the commercial data contained in the invoices confidential vis-à-vis third parties, and therefore the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The opponent points out that it is always necessary to take the characteristics of the market in question into account, particularly for expensive goods. Supercomputers are extremely expensive pieces of equipment and are purchased by high-end specialist consumers, such as research facilities and government or academic institutions. Therefore, the supercomputer market itself is extremely niche and, furthermore, the number of sales of supercomputers designed and manufactured by the opponent will not be as high as the number of sales made by the designers, manufacturers and retailers of domestic computers and ancillary equipment.
Taking this into account, the Opposition Division considers that the extent of use has been sufficiently demonstrated, as the invoices are addressed to several important organisations involved in purchasing supercomputers and associated software, for very large amounts, and there is further evidence that supports the contents of the invoices; to give just one example, the contents of the invoice in Annex 17 are confirmed by the press release issued by the opponent, dated 17/12/2012, which outlines a multimillion-pound contract awarded to the opponent by a German organisation within the supercomputing industry in relation to the supercomputer Cray XC30 (Annex 19).
The holder claims that the evidence shows use of the earlier mark for only some of the goods that were initially invoked by the opponent as the basis of the opposition. Considering the final list of goods in Class 9, after the cancellation procedure in relation to the earlier trade mark, the Opposition Division concludes that the evidence shows that the mark has been used as registered for all the goods for which the mark is registered.
Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.
The holder is right in pointing out that, in much of the evidence, ‘CRAY’ appears not as a trade mark but, rather, as a company name. There is, however, sufficient evidence of the name having been used as a trade mark, that is, to distinguish the origin of the goods.
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the opponent. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the sign was registered as the word sign ‘CRAY’ and is shown in the documents as , that is, in a slightly stylised font that does not affect its distinctive character.
Contrary to the holder’s argument, in view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.
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
The goods on which the opposition is based are the following:
Class 9: Computers; computer programs and software; computer programs recorded in computer-accessible form, memories, disc drives.
The contested goods are the following:
Class 9: Electronic apparatuses and instruments for the recording, input, storage, processing and transmission of data, digital data, digital music; apparatus and instruments for conducting, switching, transforming, accumulating electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers.
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 opponent’s computers are devices that compute, in particular programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. Therefore, the contested electronic apparatuses and instruments for the recording, input, storage, processing and transmission of data, digital data, digital music include, as a broader category, or overlap with the opponent’s computers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Therefore, the contested apparatus for recording, transmission or reproduction of sound or images includes, as a broader category, or overlaps with the opponent’s computers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
There is a link between the contested magnetic data carriers and the opponent’s disc drives. The goods have the same purpose. They can have the same producers, end users and distribution channels. Furthermore, they are in competition. Therefore, the goods are similar to a high degree.
As regards the contested apparatus and instruments for conducting, switching, transforming, accumulating electricity, these are mainly apparatus and instruments relating to electricity. The fact that the opponent’s goods need electricity to function is not sufficient to find them similar to the contested goods. Indeed, apparatus powered by electricity appears in various classes. The natures and purposes of these goods differ, as do their producers, consumers and distribution channels. The goods are dissimilar.
- 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 to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
- The signs
|
CRAY
|
|
|
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 element ‘CRAY’ of the earlier mark may be associated by a part of the relevant public with the crayfish, ‘a small shellfish with five pairs of legs which lives in rivers and streams’ (information extracted from Collins Dictionary on 12/04/2017 at https://www.collinsdictionary.com/dictionary/english/cray). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The element ‘MCRAY’ of the contested sign may be perceived by part of the relevant public as a Scottish surname. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
Visually, the signs coincide in the element ‘CRAY’, which is the sole element of the earlier mark and makes up four of the five letters of the contested sign. However, the signs differ in first letter, ‘M’, and the stylisation of the contested mark.
Therefore, the signs are visually similar to a high degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllable /CRAY/, present identically in both signs. The pronunciation differs in the sound of the first letter, ‛M’, of the contested mark, which has no counterpart in the earlier sign.
Therefore, the signs are aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that associates one or both of the signs with a concept, as the signs will be perceived as having different meanings, they are not conceptually similar. For the rest of the public, neither of the signs has a meaning and the conceptual aspect does not influence the assessment of the similarity between the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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.
- Global assessment, other arguments and conclusion
The contested goods are partly identical, partly similar to a high degree and partly dissimilar to the opponent’s goods.
The marks differ only in the first letter, ‘M’, of the contested sign; they are otherwise identical. This creates a higher than average degree of visual and aural similarity between the signs.
The presence of the additional letter at the beginning of the mark applied for does not prevent the conclusion that the marks at issue must be regarded as being visually and aurally highly similar. In this respect, as a general rule, for relatively short marks, the central elements are as important as the elements at the beginning and end of the sign (20/04/2005, T-273/02, Calpico, EU:T:2005:134, § 39).
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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
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 identity or high degree of similarity between the goods offsets any lesser degree of similarity between the signs, even for the public with a high degree of attention.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 70 490.
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 similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the opponent 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 mark.
On 23/10/2013 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 28/02/2014 and it was extended until 30/04/2014.
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.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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
| Cristina CRESPO MOLTO | Francesca DINU | Janja FELC |
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.