OPPOSITION No B 1 206 036
DGC GmbH, An der Feichten 4, 82229 Seefeld, Germany (opponent), represented by Weickmann & Weickmann Patentanwälte – Rechtsanwalt Partmbb, Richard-Strauss Str. 80, 81679 München, Germany (professional representative)
a g a i n s t
Sharp Kabushiki Kaisha, 22-22 Nagaike-cho, Abeno-ku, Osaka 545-8522, Japan (applicant), represented by Clarke Modet & Co., Rambla de Méndez Núñez, 12 – 1º Puerta 2, 03002 Alicante, Spain (professional representative).
On 27/03/2017, the Opposition Division takes the following
1. Opposition No B 1 206 036 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 5 126 421. The opposition is based on United Kingdom trade mark registration No 961 804. The opponent invoked Article 8(1)(a) and (b) and 8(5) EUTMR.
The abovementioned opposition, when filed on 07/08/2007, was based on four earlier marks, namely UK trade marks No 2 368 708, No 2 368 709, No 2 368 710 and No 961 804. The case was suspended from 25/09/2014 until 20/12/2016 to allow all the earlier marks to mature into registration. However, the Office was informed on 02/12/2016 that earlier UK trade marks No 2 368 708, No 2 368 709 and No 2 368 710 had ceased to exist. Therefore, the opposition now proceeds based on UK trade mark No 961 804.
DUAL DIRECTIONAL VIEW
Earlier trade mark
- REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are 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 European Union and, 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 shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall 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 19/10/2007 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 20/12/2009.
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.
2. 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: Tape recorders, sound amplifiers, radio receiving apparatus, loudspeakers and fitted cabinets containing loudspeakers, and tuners for use with all the aforesaid goods; but not including metal framed cabinets for loudspeakers.
The contested goods are the following:
Class 28: Hand-held games with liquid crystal displays other than those adapted for use with television receivers.
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 28
The contested goods in Class 28 are dissimilar to the opponent’s goods in Class 9. They have a different nature and serve a different purpose from all the opponent’s goods. They are neither complementary to nor in competition with each other. They belong to different fields of trade, they involve different know-how, and they are manufactured and marketed by different types of undertakings. Moreover, they target different end users.
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
For the sake of completeness, it must be mentioned that the opposition must also fail in so far as based on grounds under Article 8(1)(a) EUTMR because the goods are obviously not identical.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.