OPPOSITION No B 2 600 396
Kinyo, S.L., Albert Einstein, 64-66, 08940 Cornellà de Llobregat, Spain (opponent), represented by Asociados Pymark, S.L., Londres, 67, 2º, 3º, 08036 Barcelona, Spain (professional representative)
a g a i n s t
Shenzhen SiYong Technology Co. Ltd., Rm. 709 No. 20, Hesha Rd., Tangwei Community, Fuyong St., Baoan Dist., Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).
On 19/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 600 396 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 14 395 289. According to the notice of opposition, the opposition is based on Spanish trade mark registrations No 2 091 116 and No 205 701 ‘KINYO S.L.’, and Spanish company name ‘KINYO S.L.’, used in the course of trade in Spain. The opponent invoked Article 8(1)(a) and (b) in relation to the first two of these earlier rights and Article 8(4) EUTMR in relation to the last.
Substantiation of Spanish trade mark registration No 205 701 ‘KINYO S.L.’
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 is 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) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
In the notice of opposition filed by the opponent on 27/10/2015, Spanish national trade mark No 205 701 is indicated, inter alia, as the basis of the opposition, and the invoked grounds for the opposition in relation to this earlier right are Article 8(1)(a) and (b) EUTMR. However, the evidence filed by the opponent on 11/03/2016 to substantiate its earlier right consists of a registration certificate for a Spanish company name (i.e. company name No 205 701) and not for a Spanish trade mark, as indicated in the notice of opposition.
Article 8(1) EUTMR is aimed at protecting earlier trade marks, which are defined in Article 8(2) EUTMR as follows:
a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the EU trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:
(i) EU trade marks;
(ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;
(iii) trade marks registered under international arrangements which have effect in a Member State;
(iv) trade marks registered under international arrangements which have effect in the Union;
(b) applications for the trade marks referred to in subparagraph (a), subject to their registration;
(c) trade marks which, on the date of application for registration of the EU trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the EU trade mark , are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.
As mentioned above, the opponent’s evidence shows that the opponent is the owner of a company name and not of a trade mark as required by Article 8(1) EUTMR in conjunction with Article 8(2) EUTMR.
As company names are not protected under Article 8(1) EUTMR, the opposition based on company name No 205 701 is not well founded.
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 Spanish trade mark No 2 091 116 .
- The goods and services
The services on which the opposition is based are the following:
Class 39: Warehousing and distribution services especially for information treatment equipments, computers and computer equipment.
The contested goods are the following:
Class 5: Food for babies; powdered milk for babies; sanitary pads; milk ferments for pharmaceutical purposes; lacteal flour for babies; sanitizing wipes; sanitary panties; panty liners [sanitary]; casein dietary supplements; sanitary towels.
Class 10: Teething rings; feeding bottles; breast pumps; babies’ pacifiers [teats]; feeding bottle valves; feeding bottle teats; pessaries; condoms; contraceptives, non-chemical; love dolls [sex dolls].
Class 11: Cooking utensils, electric; air filtering installations; gas scrubbing apparatus; air purifying apparatus and machines; sterilizers; heaters, electric, for feeding bottles; air purifiers; electric food warmers.
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.
The term ‘especially’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
Contested goods in Classes 5, 10 and 11
The contested goods are mainly food for babies, dietary supplements and sanitary articles (Class 5); feeding aids and pacifiers, medical apparatus, and articles for contraception and sex aids (Class 10); and cooking, heating, air conditioning and purification equipment, as well as filters and gas scrubbing installations (Class 11). The opponent’s warehousing and distribution services refer to services whereby a company’s products are kept in a particular place for a fee and distributed on the market. It follows that the purposes and methods of use of these goods and services are different. They do not have the same providers/producers or distribution channels. Furthermore, they are neither in competition with each other nor complementary.
In the light of the above, the opponent’s services in Class 39 are considered dissimilar to all the contested goods in Classes 5, 10 and 11.
- 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 on the basis of this earlier right must be rejected.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the goods and services are obviously not identical.
It must also be stressed that the registration certificate filed by the opponent on 11/03/2016 shows that earlier Spanish trade mark registration No 2 091 116 was filed on 08/05/1997 and renewed on 15/06/2007.
According to the data included in the registration certificate, this earlier mark expired on 8/05/2017, which is after the time limit set by the Office to substantiate the opposition (i.e. 14/03/2016). As the opponent did not submit a renewal certificate showing that the term of protection of its trade mark extends beyond the abovementioned time limit, the Office should have invited the opponent to submit evidence of renewal of its trade mark (05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 68 et seq.). However, since the opposition is not successful on the basis of this earlier right, it is not necessary to extend such an invitation to the opponent and to suspend the opposition in the meantime.
NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR
The opposition is based on the company name ‘KINYO S.L.’, used in the course of trade in Spain. The opponent invoked Article 8(4) EUTMR.
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.
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) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.
On 09/11/2015 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 14/03/2016.
The opponent did not submit any evidence of use in the course of trade of the earlier sign 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.
Moreover, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely the company name ‘KINYO S.L.’
Therefore, the opposition is not successful on the basis of Article 8(4) 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
|
María Belén IBARRA DE DIEGO |
Angela DI BLASIO |
María Clara |
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.