OPPOSITION DIVISION
OPPOSITION No B 2 727 942
Bell Sports, Inc., 5550 Scotts Valley Drive, Scotts Valley, California 95066-3438,
United States of America (opponent), represented by Hanna Moore + Curley,
Garryard House 25/26 Earlsfort Terrace, Dublin 2 Dublin D02 PX51, Ireland
(professional representative)
a g a i n s t
Yang Xiaoli, No. 101, Building 8, Pingning Zhuang, Pinghu Garden, Liusha West
Sub-District, Puning City, Guangdong Province, People’s Republic of China
(applicant), represented by Haseltine Lake LLP, Redcliff Quay 120 Redcliff Street,
Bristol BS1 6HU, United Kingdom (professional representative).
On 10/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 727 942 is partially upheld, namely for the following
contested goods:
Class 11: Defrosters for vehicles; cooling installations and machines.
Class 25: Clothing; trousers; skirts; underclothing; layettes [clothing];
swimsuits; swimming trunks; footwear; hats; hosiery; gloves
[clothing]; neckties; scarfs; shirts; outer clothing; belts [clothing];
girdles; tee-shirts; sleep masks; wedding dresses.
2. European Union trade mark application No 15 232 721 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 232 721 for the figurative mark , namely
against all the goods in Classes 11, 12 and 25. The opposition is based on inter alia,
European Union trade mark registrations No 10 476 001 for the figurative mark
and No 14 637 128 for the word mark ‘BELL’.
The opponent invoked in relation to these marks Article 8(1)(b) and 8(5) EUTMR.
Decision on Opposition No B 2 727 942 page: 2 of 12
Preliminary remarks
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
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 opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s European Union trade mark registrations No 10 476 001 and No
14 637 128.
a) The goods
The goods on which the opposition is based are the following:
European Union trade mark registration No 10 476 001
Class 9: Satellite navigational devices for automobiles and global positioning
systems for automobiles; televisions, DVD players, video cassette players, compact
disc players and cassette players, all for use in automobiles; electrical cords and
wiring for use with the electrical systems of automobiles and with satellite
navigational devices for automobiles; televisions, DVD players, video cassette
players, compact disc players, cassette players, computers and compasses, all for
use in automobiles; automobile performance gauges, namely, speedometers,
tachometers, odometers, oil pressure gauges, turbo boost gauges, temperature
gauges, compasses, and voltmeters; thermometers not for medical use; animal
warning devices; light emitting diode displays; antennas other than satellite
antennas; automobile emergency kits consisting of flares and warning lights;
eyewear accessories, namely, eyewear clips/holders for automobiles; automobile
lighting, namely, safety flashing lights.
Class 12: Automobile accessories and equipment, other than automobile racing
accessories and equipment, car and garage storage accessories, namely, fitted
vehicle cargo area liners, cargo carriers, fitted automobile covers, spoilers, wings,
hoods, hood scoops, drink holders, licence plate covers, licence plate fasteners,
licence plate frames, rear view and side view mirrors, mobile device holders, pedal
covers, vehicle seats, steering wheels, steering wheel covers, seat belts, seat belt
pads, vehicle seat covers, shift and gear change knobs, side window deflectors,
splash guards, caps for valve stems, seat organisers, sun shades for vehicles, sun
Decision on Opposition No B 2 727 942 page: 3 of 12
visor shields for vehicles incorporating organisers and/or other accessories as part of
the visor, trailer hitches, towing and hitch accessories, wheel covers, wiper blade
inserts, wiper blades.
Class 21: Beverage coolers [containers], portable coolers (non-electric-), all for
use in automobiles.
European Union trade mark registration No 14 637 128
Class 9: Protective helmets; protective helmets for sports; bicycle helmets;
outer coating of bicycle helmets sold as components thereof; protective helmets
used in all activities where protection of the head is reasonably necessary; high
performance safety helmets used in all activities where protection of the head is
reasonably necessary; protective helmets for skiing, snowboarding, bicycling, skating
and rollerblading; protective helmets for motorcyclists; protective helmets for
automobile and motorcycle racing drivers; helmet accessories, namely sweat control
devices, face shields, visors, sunglasses and goggles; sunglasses; goggles;
retention mechanisms to improve helmet fit; mechanisms for improving the
adjustments of helmets; protective helmets and safety and fastening mechanisms for
the improvement of the fitting and the head adaptation of helmets for bicycling;
protective headgear; audio equipment for use in connection with helmets, namely, a
device for transmitting and receiving voice, music and other sounds while wearing a
helmet, namely, speakers and microphones that drop or snap into the earflaps of the
helmet; bicycle speedometers, odometers and computers; speed and distance
monitors for recreational and sports use; parts and fittings for the aforesaid goods.
Class 25: Footwear; bicycling footwear; shoes, namely shoes for bicycling;
clothing, namely, t-shirts, shirts and exercise clothing, namely, sweat pants, sweat
shirts, hooded shirts, training shirts, training shorts, caps, and sun visors; bicycle
clothing, namely, shorts, pants, padded shorts, padded bib shorts, jerseys, ride
shirts, tights, cycling knickers, cycling pants, jackets, vests, cycling base layers,
socks, shoe covers for use when wearing cycling shoes, arm warmers, leg warmers,
knee warmers; headwear, cycling caps, cycling hats; gloves, namely, cycling gloves
and protective cycling gloves; sweat bands and wrist bands.
After the opposition decision B 2 726 704 of 11/05/2017, which partially rejected the
contested mark, became final, the contested goods are the following:
Class 11: Water filtering apparatus; cooking apparatus and installations; cooling
installations and machines; air conditioning apparatus; defrosters for vehicles;
heating apparatus; pocket warmers; gas lighters.
Class 25: Clothing; trousers; skirts; underclothing; layettes [clothing]; swimsuits;
swimming trunks; footwear; hats; hosiery; gloves [clothing]; neckties; scarfs; shirts;
outer clothing; belts [clothing]; girdles; tee-shirts; sleep masks; wedding dresses.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of
individual goods and services to a broader category, is exclusive and restricts the
scope of protection only to the goods specifically listed.
Decision on Opposition No B 2 727 942 page: 4 of 12
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Contested goods in Class 11
The contested defrosters for vehicles have some relevant points in common with the
opponent’s automobile accessories and equipment, other than automobile racing
accessories and equipment, car and garage storage accessories, namely, fitted
vehicle cargo area liners, cargo carriers, fitted automobile covers, spoilers, wings,
hoods, hood scoops, drink holders, licence plate covers, licence plate fasteners,
licence plate frames, rear view and side view mirrors, mobile device holders, pedal
covers, vehicle seats, steering wheels, steering wheel covers, seat belts, seat belt
pads, vehicle seat covers, shift and gear change knobs, side window deflectors,
splash guards, caps for valve stems, seat organisers, sun shades for vehicles, sun
visor shields for vehicles incorporating organisers and/or other accessories as part of
the visor, trailer hitches, towing and hitch accessories, wheel covers, wiper blade
inserts, wiper blades in Class 12. The goods in question may coincide partly in their
nature (automobile parts and accessories) and they may have the same relevant
public, producers and distribution channels. Consequently, they are considered
similar.
Likewise, the contested cooling installations and machines are similar to the
opponent’s portable coolers (non-electric-), all for use in automobiles in Class 21.
These goods may coincide in their nature and purpose, they may originate from the
same companies, target the same relevant public and be sold in the same shops.
The remaining water filtering apparatus; cooking apparatus and installations; air
conditioning apparatus; heating apparatus; pocket warmers; gas lighters have a
nature that is clearly different from the opponent’s goods in Classes 9, 12, 21 and 25
that include signalling/measuring devices or life-saving apparatus and instruments,
automobile accessories and facilities or clothing. The goods under comparison differ
in purpose, and they are neither complementary nor in competition. In addition, they
are normally produced by different undertakings. Considering the above, these goods
are considered dissimilar to all the opponent’s goods.
Contested goods in Class 25
The contested clothing includes, as a broader category, the opponent’s t-shirts. Since
the Opposition Division cannot dissect ex officio the broad category of the contested
goods, they are considered identical to the opponent’s goods.
The contested footwear is identically mentioned in the opponent’s specification.
The contested hats are included in the broad category of the opponent’s headwear.
Therefore, they are identical.
Decision on Opposition No B 2 727 942 page: 5 of 12
The contested gloves [clothing] include, as a broader category, the opponent’s
cycling gloves. Since the Opposition Division cannot dissect ex officio the broad
category of the contested goods, they are considered identical to the opponent’s
goods.
The contested tee-shirts are mentioned in the opponent’s specification as t-shirts.
They are considered identical.
The contested shirts include, as a broader category, the opponent’s sweat shirts.
Since the Opposition Division cannot dissect ex officio the broad category of the
contested goods, they are considered identical to the opponent’s goods.
The contested outer clothing includes as a broader category, the opponent’s vests.
Since the Opposition Division cannot dissect ex officio the broad category of the
contested goods, they are considered identical to the opponent’s goods.
The contested hosiery are similar to the opponent’s footwear as these goods share
the same purpose, may have the same distribution channels and could be expected
to be manufactured by the same undertakings.
The contested trousers are similar to the opponent’s cycling pants, since they have
the same general purpose and method of use, may have the same distribution
channels, target the same users and could be expected to be manufactured by the
same undertakings.
The contested skirts; underclothing; layettes [clothing]; swimsuits; swimming trunks;
neckties; scarfs; belts [clothing]; girdles; sleep masks; wedding dresses are all
different types of clothing intended to be worn by humans and, as such, are similar to
the opponent’s clothing, namely, t-shirts. They are often produced by the same
undertakings and found in the same departments of large department stores and in
the same retail outlets. In addition, the goods may target the same consumers.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods found to be identical or similar are directed at the
public at large with an average degree of attentiveness.
Decision on Opposition No B 2 727 942 page: 6 of 12
c) The signs
EUTM registration No 14 637 128
BELL
EUTM registration No 10 476 001
Earlier trade marks Contested sign
The relevant territory is theEuropean 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 earlier marks are, one a figurative mark and the other one a word mark, both
composed of the element ‘BELL’, written in standard letters. In case of the figurative
mark the letters are represented in bold against a white background and placed
inside a black ellipse.
The contested sign is a figurative mark consisting of the verbal element ‘BELLOF’,
written in bold, italic and slightly stylised script. The second letter ‘L’ has a slightly
lower position in comparison to the rest of the letters composing the sign.
The unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
Since the signs in question are composed of the terms which are meaningful in
certain territories, for example in those countries where English is understood, in the
present case, the Opposition Division finds it appropriate to focus the comparison of
the signs on the English-speaking part of the public.
It must be noted that the Court has held that, although the average consumer
normally perceives a mark as a whole and does not proceed to analyse its various
details, when perceiving a word sign, they will break it down into elements which, for
them, suggest a specific meaning or which resemble words known to them
(13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
The contested sign as a whole has no clear univocal meaning for the relevant public
in the relevant territory and does not exist in common parlance. However, considering
the aforementioned principle, it is highly likely that a part of the relevant English-
speaking public will perceive the meaningful beginning ‘BELL’ within the contested
Decision on Opposition No B 2 727 942 page: 7 of 12
sign. Additionally, the only way to pronounce the contested sign ‘BELLOF’ is by
establishing a natural pause between ‘BELL’ and ‘OF’ (forming the two syllables ‘bel-
of’), which makes the initial element ‘BELL’ even more noticeable. Therefore, the
comparison of the signs will focus on the part of the English-speaking public which
will perceive the initial, meaningful element ‘BELL’ within the contested sign.
Considering all the above, the Opposition Division concludes that the element ‘BELL’,
which constitutes the verbal element of the earlier figurative mark and the only
element of the earlier word mark will be also recognized in the initial part of the
contested sign, as mentioned above, and perceived by the relevant public as
referring to ‘a device that makes a ringing sound and is used to give a signal or to
attract people’s attention’. This element has no meaning in relation to the goods in
question for the relevant public in the relevant territory and, therefore, its inherent
distinctiveness is normal. Usually, the remaining element ‘of’ of the contested sign will
be perceived by the relevant public as a preposition, ‘usually used to combine two
nouns when the first noun identifies the feature of the second noun that you want to
talk about’; however, in the case at hand, the abovementioned definition does not
apply and, consequently, this element will be perceived as a simple ending of the
contested sign (all definitions extracted from Collins online dictionary). This element
has no meaning in relation to the relevant goods for the relevant public in the relevant
territory and, therefore, it enjoys an average degree of distinctiveness.
The ellipse of the figurative earlier EUTM is a commonplace shape which will only
perform a decorative and non-distinctive function in the sign. The relevant public is
accustomed to such decorative (ornamental) elements accompanying commercial
brands and they will pay more attention to the distinctive verbal element ‘BELL’.
The contested sign and the earlier EUTM No 14 637 128 (word mark) have no
elements which could be considered more dominant (visually eye catching) or more
distinctive than other elements.
Visually, the word ‘BELL’, which constitutes the verbal element of the earlier
figurative mark and the only element of the verbal mark, will be recognized in the
beginning of the contested sign. Consumers generally tend to focus on the first
element of a sign when being confronted with a trade mark. This is justified by the
fact that the public reads from left to right and from top to bottom, which makes the
part placed at the beginning of the sign (the initial part) the one that first catches the
attention of the reader.
The signs differ in the additional element ‘of’ of the contested sign and in their
figurative elements. However, as explained above, the coinciding initial element of
the contested sign will attract the public’s attention to a greater extent.
In addition, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) /
BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN
ELEPHANT (fig.), § 59). Therefore, in view of the composition of the signs, the verbal
elements are the ones that will be used to refer to them. Furthermore, the ellipse of
the earlier figurative EUTM will only perform a decorative and non-distinctive function
in the sign.
Decision on Opposition No B 2 727 942 page: 8 of 12
Therefore, considering that the initial and distinctive element of the contested sign,
‘BELL’, reproduces the only/main element of the earlier marks, the signs are
considered visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the term ‘BELL’,
which constitutes the only pronounceable element of the earlier marks and the initial
element of the contested sign. The signs differ aurally in the pronunciation of the
ending ‘of’ of the contested sign.
Consequently, taking into account the average distinctiveness of the coinciding
component ‘BELL’ contained in both signs and the fact that this element occupies the
initial part of the contested sign, the marks are aurally similar to an average degree.
Conceptually, the relevant public in the relevant territory will perceive the word
‘BELL’ in both signs. As regards the contested sign as a whole, it has no clear
univocal meaning. However, independently of the way in which the element ‘BELLOF’
is perceived and interpreted, the relevant part of the public under analysis will be
aware of the semantic content of the word ‘BELL’ at the beginning of the contested
sign. This word is inherently distinctive in relation to the goods at issue and,
therefore, this coincidence generates an average degree of conceptual similarity
between the marks.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier marks
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 marks enjoy enhanced distinctiveness
but did not file any evidence in order to prove such a claim.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on
their distinctiveness per se. In the present case, the earlier trade marks as a whole
have 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 marks must be
seen as normal, despite the presence of a non-distinctive component in the earlier
EUTM No 10 476 001.
e) Global assessment, other arguments and conclusion
According to the case-law of the Court of Justice, in determining the existence of
likelihood of confusion, trade marks have to be compared by making an overall
assessment of the visual, aural and conceptual similarities between the marks. The
comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed
globally, taking into account all the circumstances of the case.
The contested goods are identical, similar and dissimilar to the ones covered by the
earlier marks and the attentiveness of the relevant public is average.
Decision on Opposition No B 2 727 942 page: 9 of 12
It should be underlined that the coinciding meaningful element ‘BELL’ is considered
distinctive to an average degree in relation to the goods in question, i.e. the earlier
marks enjoy an average degree of distinctiveness.
The signs under comparison are visually, aurally and conceptually similar to an
average degree, on account of the common element ‘BELL’, which constitutes the
verbal element of the earlier figurative mark and the only element of the verbal mark
and is fully included and clearly perceptible, in the beginning of the contested sign.
The signs differ in the ending ‘of’ of the contested sign and in the figurative elements
present in the signs; however, their role as indicators of origin of the goods in
question is less important/relevant than that of the common element ‘BELL’.
As mentioned above in section c), where a trade mark is composed of verbal and
figurative elements, the verbal elements usually have a stronger impact on the
consumer than the figurative components. This is justified by the fact that consumers
will more easily retain in their memory and refer to the sign in question by its name,
rather than by describing the figurative elements of the trade mark in question.
Therefore, the overall arrangement of the signs and their figurative elements will be
perceived as graphic means which perform an essentially ornamental function vis-à-
vis the verbal elements of the marks. Consequently, consumers will pay more
attention to the verbal elements of the contested sign, as they will attach more trade
mark significance to them.
Account is also 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).Therefore, given the reproduction of the element ‘BELL’ in the beginning of the
contested sign, it is likely that the relevant public displaying a normal level of
attention will associate the contested sign with the earlier marks.
Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be
registered if because of its identity with or similarity to the earlier trade mark and the
identity or similarity of the goods or services covered by the trade marks there exists
a likelihood of confusion on the part of the public in the territory in which the earlier
trade mark is protected. 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, in the present case, the relevant public may legitimately believe that the
contested sign is a new extension/continuation or a new brand line of goods provided
under the opponent’s ‘BELL’ marks because it is quite a common practice to add
additional words or letters to the main brand, as it is the case of the ending ‘of’ in the
contested sign.
Considering all the above, the Opposition Division finds that the differences between
the signs are not sufficient to counteract the similarity resulting from their coinciding
element, ‘BELL’, and that there is, in relation to identical and similar goods, a
likelihood of confusion, including a likelihood of association on the part of the English-
speaking part of the relevant public and, therefore, the opposition is partially well
founded on the basis of the opponent’s European Union trade mark registrations No
10 476 001 and No 14 637 128. As stated above in section c) of this decision, a
likelihood of confusion for only part of the relevant public of the European Union is
sufficient to reject the contested application.
Decision on Opposition No B 2 727 942 page: 10 of 12
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical and similar to those of the earlier marks.
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.
The opponent has also based its opposition on the following earlier trade marks,
namely,
– European Union trade mark registration No 11 572 831 for the figurative mark
and covering the goods in Classes 9 and 12;
– European Union trade mark registration No 14 920 243 for the word mark
‘BELL’ and covering the goods in Classes 8 and 12;
– European Union trade mark registration No 14 920 301 for the figurative mark
and covering the goods in Classes 9 and 25.
The other earlier rights invoked by the opponent are either identical or very similar to
the ones just compared above. Moreover, they cover the same or narrower scope of
the goods. Therefore, the outcome cannot be different with respect to goods for
which the opposition has already been rejected; no likelihood of confusion exists with
respect to those goods. As regards the goods in Class 8, namely bicycle tool kits;
repair tool kit for inner tubes, covered by the earlier European Union trade mark
registration No 14 920 243, the Opposition Division notes that they differ in nature,
purpose, and they are neither complementary nor in competition in relation to all the
opponent’s goods. In addition, they are normally produced by different undertakings.
Considering the above, these goods are dissimilar to all the contested goods for
which the opposition is rejected.
The Opposition Division will now continue with the examination on the ground of
Article 8(5) EUTMR.
REPUTATION — ARTICLE 8(5) EUTMR
The opponent claimed repute in the European Union in relation to all its earlier rights,
namely: European Union trade mark registrations No 10 476 001, 11 572 831,
14 637 128, 14 920 243 and 14 920 301.
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,
Decision on Opposition No B 2 727 942 page: 11 of 12
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 95(1) EUTMR, in proceedings before it the Office will examine
the facts of its own motion; however, in proceedings relating to relative grounds for
refusal of registration, the Office will be restricted in this examination to the facts,
evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the
opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part) the Office will give the opposing party the
opportunity to present the facts, evidence and arguments in support of its opposition
or to complete any facts, evidence or arguments that have already been submitted
together with the notice of opposition, within a time limit specified by the Office.
In the present case, the notice of opposition was not accompanied by any evidence
of the alleged reputation of the earlier trade marks.
On 13/07/2016 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
18/11/2016.
The opponent did not submit any evidence concerning the reputation of the trade
mark on which the opposition is based.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the
opposition must be rejected as unfounded as far as based on this ground.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
Decision on Opposition No B 2 727 942 page: 12 of 12
The Opposition Division
Gueorgui IVANOV Monika CISZEWSKA Marzena MACIAK
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.