OPPOSITION No B 2 359 902

Evva Sicherheitstechnologie GmbH, Wienerbergstr. 59-65, 1120 Wien, Austria, (opponent), represented by Puchberger & Partner Patentanwälte, Reichsratsstr. 13, 1010 Wien, Austria (professional representative)

a g a i n s t

Suárez Trading S.L., Gran Vía 40, bis 3ª planta, 48009 Bilbao, Vizcaya, Spain (applicant), represented by S. Orlando Asesores Legales y en Propiedad Industrial S.L., C/ Castelló 20, 4ºD, 28001 Madrid, Spain (professional representative).

On 28/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 359 902 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 508 891. The opposition is based on, inter alia, European Union trade mark registration No 505 834. The opponent invoked Article 8(1)(b) 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 505 834.

1. The goods and services

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

Class 6: Ironmongery, locks, fittings for doors and windows, locking cylinders, magnetic locks, keys and key blanks, locking installations; all the aforesaid goods of metal.

Class 9: Electric and electronic locks, locking installations and access control installations.

Class 20: Locks, locking cylinders, parts of locks, keys, fittings for doors and windows, all the aforesaid goods of plastic.

Class 42: Technical consultancy for the planning, manufacture and assembly of locking installations, locks and keys.

The contested goods are the following:

Class 14:  Precious metals and their alloys; Jewellery, precious stones; Horological and chronometric instruments. 

The opponent’s goods in Classes 6, 9 and 20

The opponent’s goods ironmongery refers to articles for the house and garden such as tools, nail and pans which are sold in an ironmonger’s shop.

The opponent’s locks, fittings for doors and windows, locking cylinders, magnetic locks, locking installations; all the aforesaid goods of metal; electric and electronic locks, locking installations and access control installations; locks, locking cylinders, parts of locks, keys, fittings for doors and windows, all the aforesaid goods of plastic

are mechanisms and/or systems used to keep things/persons fastened (doors, gates, windows etc.) that are often operated by keys and key blanks (opponent’s goods as well).

The opponent’s services in Class 42

The opponent’s technical consultancy for the planning, manufacture and assembly of locking installations, locks and keys are professional services designed to facilitate the installation of locking systems by enterprises and end users. These services provide specialized technical-oriented solutions to the users for the installation of locking systems. For instance, they provide the users with the creation and development of studies of technical projects regarding locking systems. These services aim to study projects objectively to ensure their smooth and correct implementation and to identify and resolve problems.

The contested goods in Class 14

The contested precious metals and their alloys; precious stones are raw materials used for the manufacture of different products. They are relatively rare and expensive metals and stones, such as gold, silver or platinum or are a mixture of these metals and precious stones so as to achieve a desired standard or quality used in jewellery, high-value coins, etc.

The contested jewellery is the art or business of a jeweller that focuses on the creation of objects that are worn for personal adornment, such as bracelets, rings, necklaces, etc.

Horological and chronometric instruments are defined as a broad category that covers time instruments. The time instruments are intended to be worn by the consumer and used as a means of telling the time. These goods are often bought as items of adornment as much as for the function of telling the time.

When taking the above mentioned descriptions into account, the contested goods are dissimilar to all the goods and services for which the earlier mark is registered. Their natures, purpose, methods of use, origins and distribution channels are different. Furthermore, they are not complementary nor in competition with each other. Consequently, the contested goods are dissimilar to all the goods and services of the earlier mark.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

The opponent has also based its opposition on the following earlier rights:

• Austrian trade mark No 139 454, EVVA, for goods and services in Classes 6, 9, 20 and 42.
• Austrian trade mark No 139 422,, for goods and services in Classes 6, 9, 20 and 42.

• International trade mark No 582 079, EVVA, for goods and services in Classes 6, 9, 20 and 42.
• International trade mark No 582 078,, for goods and services in Classes 6, 9, 20 and 42.
• European Union trade mark No 502 823, , for goods and services in Classes 6, 9, 20 and 42.

• Austrian trade mark No 5362, EVVA, for goods in class 9.

The goods and services of these earlier rights are identical (or with narrower protection) to the one compared above. Therefore, According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are also clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must also be rejected on the basis of there earlier rights.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM No 505 834, for which the opponent claimed repute in the EU.

 

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.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. The signs

EVVA	EVVA
Earlier trade mark	Contested sign

The signs are identical.

2. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation, referring to the provision and arguing that the signs are identical and that consumers will establish a link between the trade marks because of the identity between them is not sufficient. The opponent did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. The mere reference to the Law by citing Article 8(5) and Court decisions does not allow the Opposition Division to conclude that any injury can be sustained.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

Even though consumers may or are likely to establish a link between the two trade marks, in the sense, for example, that the contested trade mark would bring the earlier trade mark to the minds of consumers, it does not follow automatically that the former will take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 71).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent merely claims that use of the contested trade mark would take unfair advantage of, and be detrimental to, the distinctive character or repute of the earlier trade mark. The circumstances described as being ‘detrimental to the repute’, ‘detrimental to the distinctive character’, or taking ‘unfair advantage of the distinctive character or repute of the earlier trade mark’, are in fact very different from each other. In its submissions, the opponent refers to them without any distinction, treating the whole as an unavoidable effect of the identity of the signs and the alleged reputation of the earlier trade mark. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade mark, the opposition is considered not well founded under Article 8(5) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Chantal VAN RIEL

Inés GARCIA LLEDO

Saida CRABBE

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

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.