OPPOSITION No B 2 701 152

Viacom International Inc., 1515 Broadway, New York, NY 10036-5794, United States of America (opponent), represented by Maucher Jenkins, 26 Caxton Street, London SW1H 0RJ, United Kingdom (professional representative)

a g a i n s t

Xiamen Yihao Web Science and Technology Co. Ltd., Room 301, Building 1, 12 Wanghai Road, Software Park II, Siming District, Xiamen, Fujian 361000, People’s Republic of China (applicant), represented by Nextmarq, 1 Rue Chabrier, 13100 Aix-en-Provence, France (professional representative).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 701 152 is partially upheld, namely for the following contested goods:

Class 9:        Laptop computers; optical apparatus and instruments; portable telephone; sunglasses; spectacles [optics]; stereoscopes; life saving apparatus and equipment; cameras [photography]; camcorders; battery charger; headphones; breathing apparatus for underwater swimming; diving suits; gloves for divers; detectors; computer programs [downloadable software]; navigation apparatus for vehicles [on-board computers]; cabinets for loudspeakers; batteries, electric; data processing apparatus.

Class 12:        Electric vehicles; scooters [vehicles]; vehicles for locomotion by land, air, water or rail; bicycles; bicycle frames; rims for wheels of bicycles, cycles; cycle saddles; balance weights for vehicle wheels; baby carriages; cycle cars; remote control vehicles, other than toys; jet engines for land vehicles; anti-theft devices for vehicles; camping cars; motor homes; cars.

Class 28:        Skating boots with skates attached; skateboards; toys; dolls; toy vehicles; surf boards; fishing tackle; climbers’ harness; golf clubs; body-training apparatus; pitch mark repair tools [golf accessories]; scooters [toys]; toys for domestic pets; skis; radio-controlled toy vehicles; apparatus for games; bladders of balls for games; body rehabilitation apparatus; playing balls; nets for sports; snowshoes.

2.        European Union trade mark application No 14 650 121 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 14 650 121. The opposition is based on European Union trade mark registrations No 1 312 016, No 3 572 534, No 5 060 918 and No 13 559 349 and non-registered trade marks ‘DORA’ and ‘DORA THE EXPLORER’ in the United Kingdom. The opponent invoked Articles 8(1)(a) and (b), 8(4) and 8(5) EUTMR.

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 registration No 1 312 016.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 9:        Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; apparatus for storing, providing, recording, transmitting and reproducing sound and/or images; motion pictures films and videotapes, videodiscs and recorded magnetic tapes with sound and/or images; phonograph records and discs; amusement apparatus for use with television receivers; computers; computer programs; computer software; interactive computer systems; magnetic and fibre optical data carriers; sound, video and data recording and reproducing apparatus; apparatus for recording, transmitting and reproducing sound and/or images; amusement apparatus for use with a television screen or video monitor; games and apparatus for games for use with a television screen or video monitor; computerised or electronic amusement apparatus; coin or token operated electrical or electronic amusement apparatus; computer games; electronic games; video games; CD-ROM games, audio output games; games cartridges for use with electronic games apparatus; sound and video recordings; cinematographic and photographic films; motion picture films and videotapes; sunglasses; instructional and teaching apparatus and instruments; sound recordings; phonograph recordings; records, discs, tapes, cassettes, cartridges, cards and other carriers, all bearing or for use in bearing sound recordings, video recordings, data, images, games, graphics, text, programs or information; phonograph records and discs; game cartridges for computer video games and video output game machines; computer game cassettes, computer game programs, computer game tapes; memory carriers, interactive compact discs and CD-ROMS; parts and fittings for all the aforesaid goods.

Class 16:        Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks; magazines, periodical publications, books and newspapers; paper and cardboard articles; writing instruments, pencils, pens, notepads, writing pads, greeting cards, transfers (decalcomanias); figurines (statuettes) of papier mache; ordinary playing cards; instructional and teaching materials, writing machines, office machines and typewriters; printed publications; booklets; catalogues; guides; carrier bags; paper bags; pamphlets; brochures; news sheets; printed programmes; crayons; paint brushes; erasers; rulers; pencil sharpeners; pencil boxes and cases; pencil holders; posters; photograph albums; ring binders; folders; note-books; diaries; calendars; postcards; drawings (graphic); stickers; stencils; bumper stickers, fine paper, gift vouchers, labels, note-paper, paper packaging materials, paper tissues, printing paper, tickets, wrapping paper, writing paper, cardboard, printed computer programs; paper tape and cards for use in data processing; instructional materials for game cartridges for computer video games and video output game machines; manuals for computer game cassettes, computer game programs and computer game tapes; parts and fittings for all the aforesaid goods.

Class 25:        Clothing, footwear, headgear; sportswear; swimwear; leisurewear; knitwear; nightwear; shirts, t-shirts, sweatshirts; jeans, trousers; hats, caps; boots; shoes, sandals, slippers, belts, scarves, gloves, socks; ties; outer-clothing, casualwear; jackets, suits, skirts, stockings, tights, sweaters, dresses, blouses.

Class 28:        Electronic games and amusement apparatus other than for use with television receivers; video game machines, home video game machines and hand held video game machines, none being for use with television receivers; games and playthings; board games; gymnastic and sporting articles and apparatus; toys and dolls; part and fittings for all the aforementioned goods.

Class 41:        Entertainment, education and instruction services; radio and television entertainment services; film, music, sport, video and theater entertainment services; production, preparation, presentation, distribution, syndication, networking and rental of television and radio programs and of films, animated films, and sound and video recordings; production of live entertainment features, production of television entertainment features; services relating to motion picture entertainment, to television entertainment and to live performances and shows; services relating to the production of books, magazines and periodicals; production and rental of educational and instructional materials; publishing; organization, production and presentation of events for educational, cultural or entertainment purposes; organization, production and presentations of competitions, contest, games, quizzes, fun days, exhibitions, sporting events, shows, road shows, staged events, theatrical performances, concerts, live performances and audience participation events; provision of entertainment and education for accessing via communication and computer networks; provision of information relating to any of the aforesaid services.

The contested goods are the following:

Class 9:        Laptop computers; optical apparatus and instruments; portable telephone; sunglasses; spectacles [optics]; stereoscopes; life saving apparatus and equipment; cameras [photography]; camcorders; battery charger; headphones; breathing apparatus for underwater swimming; diving suits; gloves for divers; detectors; computer programs [downloadable software]; navigation apparatus for vehicles [on-board computers]; cabinets for loudspeakers; batteries, electric; data processing apparatus.

Class 12:        Electric vehicles; scooters [vehicles]; vehicles for locomotion by land, air, water or rail; bicycles; bicycle frames; rims for wheels of bicycles, cycles; cycle saddles; automobile wheel; automobile wheel axis holder; balance weights for vehicle wheels; baby carriages; cycle cars; remote control vehicles, other than toys; jet engines for land vehicles; bodies for vehicles; anti-theft devices for vehicles; camping cars; upholstery for vehicles; motor homes; cars.

Class 28:        Skating boots with skates attached; skateboards; toys; dolls; toy vehicles; surf boards; fishing tackle; climbers’ harness; golf clubs; body-training apparatus; pitch mark repair tools [golf accessories]; scooters [toys]; toys for domestic pets; skis; radio-controlled toy vehicles; apparatus for games; bladders of balls for games; body rehabilitation apparatus; playing balls; nets for sports; snowshoes.

        

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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 9

Optical apparatus and instruments; sunglasses; computer programs [downloadable software] are identically contained in both lists of goods (including synonyms).

The contested laptop computers are included in the broad category of the opponent’s computers. Therefore, they are identical.

The contested portable telephone is included in the broad category of the opponent’s apparatus for recording, transmitting and reproducing sound. Therefore, they are identical.

The contested spectacles [optics]; stereoscopes are included in the broader category of the opponent’s optical apparatus and instruments. Therefore, they are identical.

The contested life saving apparatus and equipment include, as a broader category, the opponent’s life-saving apparatus and instruments. 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 cameras [photography] are included in the broad category of the opponent’s photographic apparatus and instruments. Therefore, they are identical.

The contested camcorders are included in the broad category of the opponent’s apparatus for storing, providing, recording, transmitting and reproducing sound and images. Therefore, they are identical.

The expression electric apparatus and instruments in Class 9 cannot be interpreted as covering all apparatus powered by electricity. Indeed, there are apparatus powered by electricity in various classes. The term electric apparatus included in the opponent’s list of goods in Class 9 is to be understood as covering only apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

Therefore, and as the contested battery charger; batteries, electric are for the accumulating of electricity, these goods are included in the broad category of the opponent’s electric apparatus and instruments, and they are identical.

The contested headphones are included in the broader category of the opponent’s apparatus for reproducing sound. Therefore, they are identical.

The contested detectors overlap with the opponent’s optical apparatus and instruments, insofar as these categories include optical detectors. Therefore, they are identical.

The contested navigation apparatus for vehicles [on-board computers] overlap with the opponent’s nautical apparatus and instruments to the extent that the latter are navigation apparatus or instruments. Therefore, they are identical.

The contested data processing apparatus is included in the broader category of the opponent’s data processing equipment. They are identical.

The contested breathing apparatus for underwater swimming; diving suits; gloves for divers are diving equipment used to make diving activities possible, safer or easier. To that extent, these goods overlap with the opponent’s life-saving apparatus and instruments and they are considered identical.

The contested cabinets for loudspeakers are used as containers or holders for the opponent’s apparatus for recording, transmitting and reproducing sound, which includes, inter alia, loudspeakers. The goods can be expected to have the same commercial origin, they have the same distribution channels and they target the same public. Therefore, they are similar.

Contested goods in Class 12

The contested anti-theft devices for vehicles and the opponent’s signalling apparatus and instruments in Class 9, which includes, inter alia, alarm and warning apparatus and instruments, albeit they are developed and used in different contexts (the former are specifically for vehicles), have the same purpose and are similar in their method of use. The goods at issue can be developed and sold by the same producers. Therefore, they are similar.

The contested balance weights for vehicle wheels and the opponent’s measuring apparatus and instruments in Class 9, which encompass wheel balancing apparatus, albeit they have different natures, have the same purpose. The goods at issue can also be developed and sold by the same producers and have the same distribution channels and public. Therefore, the goods at issue are similar.

The contested electric vehicles; scooters [vehicles]; vehicles for locomotion by land, air, water or rail; bicycles; baby carriages; cycle cars; remote control vehicles, other than toys; camping cars; motor homes; cars can all be driven by electric motors and therefore require electric accumulators. These goods will therefore, to that extent, coincide in relevant public and distribution channels with the opponent’s electric apparatus and instruments in Class 9, which include, inter alia, electric batteries for vehicles (as also explained above). Furthermore, these goods are complementary. Therefore, they are similar.

The contested bicycle frames; rims for wheels of bicycles, cycles; cycle saddles can be used to equip the opponent’s gymnastic and sporting articles and apparatus in Class 28, as the latter include, inter alia, stationary exercise bicycles. Therefore, these products are considered similar to the extent that they are complementary to each other and their manufacturers and distribution channels are likely to be the same.

The contested jet engines for land vehicles and the opponent’s electric apparatus and instruments in Class 9, which include electric batteries for vehicles, are similar, as they can coincide in relevant public and distribution channels. Furthermore, they are complementary.

The contested automobile wheel; automobile wheel axis holder; bodies for vehicles; upholstery for vehicles are all components of different kinds of vehicles and these goods are made by specialised companies, are sold in specialised outlets and target a professional public. The opponent’s goods and services, namely goods and services in Classes 9, 16, 25, 28 and 41, are not in any way related to the remaining goods in this class. They have no coinciding points as they differ in nature, producer/provider, relevant public, distribution channels and intended purpose. Furthermore, they are not in competition or complementary. Therefore, they are dissimilar.

Contested goods in Class 28

Toys; dolls are identically contained in both lists of goods.

The contested skating boots with skates attached; skateboards; surf boards; fishing tackle; climbers’ harness; golf clubs; body-training apparatus; pitch mark repair tools [golf accessories]; skis; body rehabilitation apparatus; nets for sports; snowshoes are included in the broad category of the opponent’s gymnastic and sporting articles and apparatus. Therefore, they are identical.

The contested toy vehicles; scooters [toys]; toys for domestic pets; radio-controlled toy vehicles are included in the broad category of the opponent’s toys. Therefore, they are identical.

The contested apparatus for games; bladders of balls for games are included in the broad category of the opponent’s games. Therefore, they are identical.

The contested playing balls are included in the broad category of the opponent’s playthings. Therefore, they are identical.

2. 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 and at business customers with specific professional knowledge or expertise in the relevant markets.

The degree of attention may vary from average to high depending on the price, sophistication and specialised nature, or terms and conditions of the purchased goods. As an example, the attention will be high when expensive purchases of vehicles are involved, in particular vehicles such as automobiles, motor cars for racing, trucks and lorries, motor camping homes, etc., as in these cases, taking into consideration the price of cars, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T-486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 39-42).

3. The signs

DORA THE EXPLORER
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 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.

The verbal elements of the earlier mark are meaningful in certain territories, for example in those countries where English is understood. Moreover, the understanding of the words may have an impact on the distinctiveness of certain elements of the signs. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Ireland, Malta and United Kingdom.

The earlier mark consists of the verbal elements ‘DORA’ and ‘THE EXPLORER’. The word ‘DORA’ will be perceived by the relevant public as, inter alia, a female given name. The word ‘EXPLORER’ will be perceived as meaning someone who travels to places to discover what is there, and the word ‘THE’ will be perceived as a function word used after a person’s name to indicate a characteristic trait or well-known activity specified by the succeeding noun. The earlier mark as a whole will be associated with a girl called Dora who explores the world. Therefore, the focus of the mark lies in the element ‘DORA’, while the second element, ‘THE EXPLORER’, has a qualifying role.

In the context of the relevant goods, the element ‘DORA’ is fanciful and enjoys an average degree of distinctive character. On the other hand, bearing in mind that that relevant goods are directly or potentially related to the exploration of the world, be it in a professional way or more as in children’s adventure, the mark’s second element, ‘THE EXPLORER’, alludes to the intended purpose or field of application of those goods and its distinguishing capacity is weak.

The contested sign consists of a fairly standard representation of the word ‘Dooraa’. The relevant public will perceive the element as a fanciful word with no meaning and in relation to the goods it has an average degree of distinctive character.

Neither of the signs has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in ‘DO*RA*’, which makes up the first and most distinctive element of the earlier mark and four out of six letters of the contested sign. They differ in the letters ‘**O**A’ in the contested sign; however, as these form double letters (i.e. they are the same as the letter before them), their impact on the aural and visual impressions of the signs will be limited. Furthermore, the signs also differ in the element ‘THE EXPLORER’ of the earlier mark; however, that element has a lesser impact on the overall impression produced by the earlier mark.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, while the public in the relevant territory will perceive the earlier mark as explained above, the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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 covered are from the same or economically linked undertakings.

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

For the purposes of the global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

The goods and services are partly identical, partly similar and partly dissimilar. The inherent distinctiveness of the earlier mark is normal and the degree of attention of the relevant public varies from average to high.

The signs coincide in four out of six letters of the contested sign, which constitute the first and most distinctive element of the earlier mark, as explained in section c) of this decision. Taking into account the impact of the first element of signs, and the fact that the expression ‘THE EXPLORER’ has a lesser impact on the overall impression of the earlier mark, the differences between the signs are not sufficient to outweigh the visual and aural similarities and exclude a likelihood of confusion, even where the public’s degree of attention is enhanced.

In the light of the foregoing, the degree of similarity between the signs at issue is sufficient for it to be considered that a substantial part of the relevant public could reasonably believe that the identical or similar goods bearing the sign ‘Dooraa’ come from the same undertaking as those bearing the earlier mark, ‘DORA THE EXPLORER’, or from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking 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 1 312 016. 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.

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) 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:

• European Union trade mark registration No 3 572 534 for the word mark ‘DORA’, based on goods in Classes 9, 25 and 28;

• European Union trade mark registration No 5 060 918 for the figurative mark , based on goods and services in Classes 9, 25, 28, 38 and 41;

• European Union trade mark registration No 13 559 349 for the figurative mark , based on goods and services in Classes 3, 18, 25, 28 and 41.

Earlier European Union trade mark registration No 3 572 534 covers a narrower scope of goods than the ones compared in section a) of this decision. Earlier European Union trade mark registrations No 5 060 918 and No 13 559 349 are also registered for, in addition to the goods and services compared in section a) of this decision, Classes 3, 18 and 38 and some additional goods in Class 28 (e.g. decorations for Christmas trees), and, although the scope of protection of these marks is broader in that they include these classes, the goods and services are clearly dissimilar to the remaining contested goods. The goods and services registered in Classes 3, 18 and 38 cover cleaning and cosmetic preparations in Class 3, bags, purses and umbrellas in Class 18 and broadcasting services in Class 38. Therefore, these goods and services have no coinciding points with the remaining contested goods, which cover components of various kinds of vehicles, as they differ in nature, producer/provider, relevant public, distribution channels and intended purpose. Furthermore, they are not in competition or complementary. 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.

For the sake of completeness, and in relation to European Union trade mark registration No 3 572 534 ‘DORA’, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs and/or the goods are obviously not identical. Although the opponent claimed reputation/enhanced distinctiveness also in relation to the other trade marks invoked as the basis of the opposition, no evidence was filed in that regard.

The Opposition Division will continue with the assessment of the opposition based on Article 8(5) EUTMR in respect of the goods found to be dissimilar to the opponent’s goods and services, namely the contested automobile wheel; automobile wheel axis holder; bodies for vehicles; upholstery for vehicles in Class 12.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent has claimed reputation for all goods and services covered by European Union trade mark registrations No 1 312 016, No 3 572 534, No 5 060 918 and No 13 559 349.

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 03/06/2016 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 08/10/2016.

On 04/10/2016, the opponent submitted observations; however, no evidence concerning the reputation of the trade marks on which the opposition is based was submitted.

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.

The Opposition Division will conclude with the assessment of the opposition based on Article 8(4) EUTMR in respect of the remaining contested goods.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opposition is based on the non-registered trade marks ‘DORA’ and ‘DORA THE EXPLORER’ in the United Kingdom.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

The time limit given to the opponent for submitting further facts, evidence and arguments for substantiating its claims is set out under the ‘Reputation’ section of this decision. Reference is made to those facts, as they are equally applicable in relation to Article 8(4) EUTMR.

The opponent did not submit any evidence of use in the course of trade of the earlier signs on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) 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

Solveiga BIEZA

Cecilie Leth BOCKHOFF

Michele M. BENEDETTI-ALOISI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.