OPPOSITION No B 2 198 144

Mag Instrument, Inc., 2001 South Hellman Avenue Ontario, CA 91761, United States (of America) (opponent), represented by Viering, Jentschura & Partner mbB, Grillparzerstraße 14, 81675 München, Germany (professional representative)

a g a i n s t

Castrol Limited, Technology Centre Whitchurch Hill, Pangbourne Reading RG8 7QR, United Kingdom (applicant), represented by BP Group Trade Marks, 20 Canada Square, Canary Wharf, London  E14 5NJ, United Kingdom (professional representative).

On 07/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 198 144 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 10 535 706. The opposition is based on European Union trade marks No 18 721 and No 18 606 and on German trade marks No 39 726 136, No 1 115 163 and No 2 096 600. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PRELIMINARY REMARK

All of the earlier marks are subject to proof of use requirement however for reasons of procedural economy that will become apparent below, there is no need to assess the evidence of use submitted by the opponent.

REPUTATION – ARTICLE 8(5) EUTMR

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.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

According to the opponent, the earlier European Union trade marks have a reputation in Belgium, Germany, Luxembourg, the Netherlands, the United Kingdom and the European Union as a whole, and the earlier German trade marks have a reputation in Germany.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 31/12/2011. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the territories as mentioned above prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

EUTM No18 606 ‘MAG’

Class 9:        Accessories for lighting apparatus, in particular flashlights (torches).

Class 11:        Lighting equipment, in particular flashlights (torches), including parts and accessories for the aforesaid goods.

EUTM No 18 721 ‘MAG-LITE’

Class 9:        Accessories for lighting apparatus, in particular pocket torches.

Class 11:        Lighting equipment, in particular pocket torches, including parts and accessories for the aforesaid goods.

DE trade mark No 39726136 ‘MAG-NUM STAR’

Class 11: Bulbs for flashlights.

DE trade mark No 1 115 163 ‘MAG-LITE’

Classes 9/11:        Flashlights, bulbs for flashlights, accessories for flashlights, namely halters, lenses, charging devices, electric input and output cables, batteries and potential transformers.

DE trade mark No 2 096 600 ‘MAG’

Class 11:        Flashlights, electric torches and other lighting apparatus, as far as included in Class 11.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 25/10/2013 the opponent requested that evidence previously submitted in other opposition proceedings be taken into account as evidence of reputation. It is noted that the opponent submitted evidence at later stages in the proceedings, in reply to the applicant’s request for proof of genuine use of the earlier marks, however these documents cannot be taken into account in the assessment of reputation as they were submitted after the time limit for the opponent to prove the existence and scope of protection of the earlier marks. The time limit was indeed 30/10/2013 and the additional evidence was submitted on 30/05/2014 and 06/02/2015.

The evidence received (or rather referred to) on 25/10/2013 is the following:

• Affidavit signed by Mr Hintz, the owner of the company ‘Siegfried Hintz’, a German distributor of the opponent’s ‘MAG-LITE’ flashlights. It provides the sales figures of ‘flashlights of Mag Instruments, in particular Mag-Lites’, in Germany from 2006 to 2011. The figures vary between 715 983 units in 2011 and 1 019 438 units in 2007, being constantly above 800 000 units the remaining years of the period. It is noted that these correspond to various models of flashlights, whose designations all include ‘Mag-Lite’, except for one (‘Mag Charger’ with sales ranging from 4 769 to 7 906 units depending on the year).

The opponent also provides the sales figures for ‘MAG-LITE’ replacement lamps during the same periods ranging from 132 041 in 2011 and 342 156 in 2006, and being constantly over 180 000 the remaining years.

The following documents are annexed to the affidavit:

• Undated pictures of various flashlights on which the trade mark ‘MAGLITE’ (in one word) or ‘MAG-LITE’ can be seen ( together with other elements such as ‘MINI’, ‘SOLITAIRE’), as well as of replacement lamps, on the packages of which the trade mark ‘MAGLITE’ can also be seen. There is also one flashlight with the trade mark ‘MAG CHARGER’.

• Document entitled ‘MAGLITE LIGHTING PRODUCTS 2012’, in English, showing the various ‘Maglite’ flashlights (with incandescent or led light). (the designations ‘Maglite’ and ‘MAG-LITE’ are used interchangeably for the same models). There is also a model named ‘Maglite®MAG-TAGtm’ and the already mentioned ‘MagCharger’ flashlight. Brochures in German, undated, concerning the same products.

• Price list of the ‘Siegfried Hinz’ company, undated, including several models of flashlights (and their accessories) designated as: ‘LED MINI MAGLITE’.

• Affidavit signed by Mr Zechini, Vice-President of the opponent’s company, in Ontario (USA), confirming that flashlights with the trade marks ‘MAG’ and ‘MAG-LITE’ have been exported to Europe in high volumes for many years, and providing the sales volumes for the period 2006-2012 in several countries/territories: USD 7 961 000 for France, USD 55 269 000 for Germany and Austria, USD 11 829 000 for Italy and Greece, USD 2 989 000 for Spain and Portugal, USD 8 200 000 for Sweden; USD 24 358 000 for the United Kingdom and USD 5 011 000 for Finland. It estimates advertising expenses for Europe during the same period at USD 7 918 000. It also provides the sales figures for bulbs with the same trade marks.

It adds that the company is one of the word leaders in the production of flashlights and that it defends its trademark against any dilution or infringement across all EU countries by filling oppositions and starting infringement proceedings. Pictures of flashlights and bulbs are enclosed.

• Declaration of Dr Ulrick Hocke (Attorney in law, member of Hoefer & Partner). He indicates that he has been acting for the opponent in infringement proceedings and that the high degree of public awareness of the trade marks is demonstrated by the fact that competitors imitate the shape, style and overall appearance of the opponent’s flashlights to promote their own counterfeit products. It provides extracts from ‘cease and desist’ declarations from competitors acknowledging that they have imitated the ‘MAGLITE’ flashlights, dated between 1999 and 2013. He also quotes Prof. Eike Ullman, Presiding Judge of the First Senate for Civil Matters of the German Federal Supreme Court who in a presentation at the 3rd Cologne Symposium on Trade mark and Unfair competition law, referred to ‘MAG-LITE’ as ‘the famous designer flashlight’.

• Extract from Wikipedia concerning the trade mark ‘Maglite’ (also MAG-LITE or MAGLITE’) for flashlights, in German partially translated in English, stating ‘MAGLITE’ flashlights became known as a police item of equipment in the US and are often seen in movies. The document indicates that the manufacturer advertises the product as a very robust one with a lifetime warranty although in Germany a 10-year warranty is offered. It also mentions that the company ‘Siefried Hinz, Inc’ is the exclusive distributor in Germany. Different models are mentioned some being ‘MAG-LED‘.

• Extracts from catalogues of different sales outlets (ALLJADG, A.S.M.C., BAUHAUS, CONRAD, DISTRELEC, ELTRIC, FRANKONIA, SELTON, VIKING DIRECT dated 2006 to 2010), as well as advertisements in magazines (POLIZEI 2007, CD SICHERHEITS MANAGEMENT, 2006, 2007, 2008, ADAC MOTORWELT 2006 2007 2008, WM, etc). All are in German. They show ‘MAGLITE’, ‘MAG-LED’ and ‘MAG-CHARGER’ flashlights.

• Extract from the opponent’s website relating to the founder of the opponent’s company, Mr Maglica and to the origin, development and success of the ‘MAGLITE’ flashlights, referring to their use by the US police as well as to the fact that they have been honoured by the ‘Museum for Applied Arts’ in Germany, ranked by the ‘Fortune’ and ‘Money’ magazines among the top 100 products that America makes best, and referred to as the ‘Cadillac of flashlights’ in the ‘Wall street journal’ in 1996. The extract also includes a quote from the CEO of Apple Computer saying that he wanted Apple to be ‘essentially the Maglite of computers’. The article refers to sales in Europe and particularly in Germany.

In its observations the opponent adds that ‘MAG-LITE’ flashlights are permanently exhibited in different museums: ‘Museum fur Angewandte Kunst’ in Cologne,  ‘Die Neue Sammlung’ in Munich/Nuremberg, ‘Museum of Modern Art of New York’, ‘Kunstmuseum im Ehrendorf’ in Düsseldorf, and ‘Stiftung preuBisher Kulturbesitz’ in Berlin. It also mentions that the ‘MAGLITE’ flashlights are often referred to in international and national film productions.

• Letter from the Managing Director of the museum ‘Die Neue Sammlung’ (The International Design Museum) in Munich and Nuremberg, confirming that the flashlight ‘MINI-MAGLITE’ has been in the permanent design collection since 1989. Information of unknown origin regarding the museum, which is described as one of the world’s leading museums for applied arts of the 20th century and the world’s largest museum in the field of industrial design.

• Letter from the ‘Museum für Angewandte Kunst’ (The Museum of Applied Art) in Cologne, confirming that three models of ‘MagLite’ flashlights form part of the permanent design collection.

• List of more than 50 book titles containing references to ‘MAGLITE’ flashlights, written by internationally known authors such as Michael Connelly, Lee Child, James Patterson, Arturo Perez Reverte. The list is very precise for each book, even mentioning the number of the page on which the ‘MAG-LITE’ flashlight is referred to.

• Document entitled ‘MAG-LITE – 2009 1ST Quarter Report’, issued by the company Norm Marshall & Associates, Inc. The document is not self explanatory. The opponent describes it as a list of movies containing references to ‘MagLite’ flashlights.

• Extracts from books and magazines including a section dedicated to the ‘MAGLITE’ flashlights (American Style, the Patriotic Consumer, Cult).

• Copy of the opponent’s German tridimensional trade mark registration No 3 980 579.

The opponent also adds that national courts have acknowledged the reputation of the mark ‘MAG-LITE’ and it provides extracts from judgements of the Court of Hamburg of 13/08/2002 and from the Court of Antwerp of 27/06/2003. The judgments mention: ‘the MAG-LITE is well known’, ‘it unequivocally follows from the list provided… that the trade marks invoked by MAG are well-known trade marks in this context and  even that they are generally known marks within the meaning of Article 6bis of the Paris Convention’. It refers to an opposition decision of the EUIPO, B 1 017 997, which established that ‘the earlier trade marks, in particular ‘MAG-LITE’, enjoys a high degree of recognition and are regarded as a reference in their field of trade, an image that has been consistently recognised and praised by independent and trustful sources’.

The above evidence does not include direct evidence of reputation such as surveys establishing that the relevant public is aware of the trade mark or independent rankings/awards reflecting its commercial success. The sales and turnover figures are provided by the opponent’s distributor in Germany, the opponent itself and its lawyer namely interested parties. They are not objectively supported by any invoices or official accounting documents. Nothing indicates that the relevant public may be aware of the use of the opponent’s flashlights by the police in the USA or of the articles in ‘Cult’, ‘The American Style’ and ‘The Patriotic Consumer’.

However, the evidence consists of a broad array of documents which, taken in their entirety, convincingly suggest that the earlier trade marks are bound to be well-known by a significant part of the relevant public in Germany.

In particular, the fact that the ‘MAG-LITE’ flashlights are exhibited in several museums, in several towns of Germany, and referred to in many books, taken together with the fact that those products have continuously been advertised in catalogues of several German sales outlets, constitute indirect but strong evidence of some degree of reputation.

The European Court of Justice has clarified that for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice (06/10/2009, C-301/07 ‘PAGO’, EU:C:2009:611, & 30).

Therefore, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade marks ‘MAG-LITE’ enjoy a certain degree of recognition among the public in Germany and in the European Union.

Whether the degree of this reputation is sufficient for Article 8(5) EUTMR to be applicable will depend on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the type of goods and services in question, the relevant consumers, etc.

In any case, the evidence only succeeds in establishing that the ‘MAG-LITE’ trade marks are reputed. Contrary to the opponent’s claims, such reputation cannot be extended to the other earlier trade marks ‘MAG’ and ‘MAG-NUM STAR’. The latter is hardly ever mentioned in the evidence. As regards ‘MAG’, the fact that it is an element of the reputed trade mark ‘MAG-LITE’ whose other element, ‘LITE’ (which means ‘light’) is descriptive in relation to the goods at issue for a part of the public, such as the English-speaking public, does not lead to the conclusion that ‘MAG’ on its own is reputed. Indeed the items of evidence that are decisive as regards the existence of reputation, namely those concerning the museums and the list of books, only refer to the ‘Maglite’ (or ‘MAG-LITE’) flashlights. It is clear that the opponent also sells flashlights (and their accessories) under the trade marks ‘MAG-LED’ and ‘MAG-CHARGER’ but there is no evidence of reputation concerning the latter.

In its observations of 30/05/2014, the opponent mentions that the Office acknowledged the well-known character of its marks ‘MAG’, ‘MAG-LITE’, ‘MAGLITE’ and ‘MINI MAGLITE’ in opposition decision No B 1 828 063 of 23/10/2013. However, this statement is not accurate since the decision in question only explicitly acknowledged the enhanced distinctive character (which requires a lower threshold of recognition than reputation) of the trade mark ‘MAGLITE’. The same conclusion was reached in opposition decision No B 1 017 997 of 25/11/2008. Finally, in opposition decision No B 2 065 301 of 07/04/2014, the opposition under Article 8(5) EUTMR failed because the evidence of reputation was submitted after the expiry of the time limit for substantiation.

In addition, the evidence does not succeed in establishing that the ‘MAG-LITE’ trade marks have a reputation for all the goods on which the opposition is based and for which reputation has been claimed, but exclusively for flashlights in Class 11.

In view of the above, reputation is only established for the opponent’s earlier EUTM No 18 721 ‘MAG LITE’ and German trade mark No 1 115 163 ‘MAG-LITE’ in relation to flashlights in Class 11.

The opposition under Article 8(5) EUTMR is rejected as far as it is based on the remaining trade marks/goods given that reputation, which is one of the requirements of Article 8(5) EUTMR has not been proven for those trade marks/goods.

2. The signs

MAG-LITE	MAGNA
Earlier trade marks	Contested sign

The relevant territory is the European Union and Germany.

The earlier mark will be perceived by the relevant public as being formed by two hyphenated elements namely ‘MAG’ and ‘LITE’. For the English-speaking part of the public, the element ‘LITE’ is descriptive to the extent that it is a common misspelling of the English word ‘light’ which is directly related to the goods at issue namely flashlights. It is of average distinctive character for non-English speakers. The element  ‘MAG’ is either meaningless or its meaning in some languages (such as ’magician’ in Romanian, ‘seed’ in ‘Hungarian, a conjugated form of the verb ‘to like’ in German), is not related to the goods at issue. It is, therefore, distinctive for the entire relevant public.

The contested trade mark ‘MAGNA’ will be perceived by the relevant public as a whole, namely it will not be broken down into elements. For part of the public such as the French-speaking public, it does, not convey any meaning. However it has a meaning in some languages, such as ‘machine/engine’ in Maltese and ‘great, important’ in Portuguese and Spanish for instance (with a poetic, official and emphatic meaning, hence not normally used in relation to everyday goods). The distinctiveness of the element in relation to the goods at issue is not affected by those meanings therefore the element is deemed to be of average distinctiveness for the relevant public. It is noted that part of the public may also recognise the Latin word present in the expressions ‘Magna Carta’ and ‘Magna cum Laude’. It is probable that for this part of the public, the word alone (not accompanied by the rest of the expression) will not be associated with any meaning, but this will result in this part of the public without doubt perceiving the word as an indivisible whole.

Visually, the signs share the three letters ‘MAG’ and differ in the letters ‘LITE’ (and hyphen) of the earlier mark and in the letters ‘NA’ of the contested sign.

For the English-speaking part of the public, the difference in ‘LITE’ of the contested sign has a reduced impact since it is clearly related to the goods at issue (which are flashlights). Furthermore, the beginning of the marks, which is the part that first catches the consumer’s attention, is the same namely the first three letters of the signs ‘MAG’.

However, the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details (13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Indeed in the present case, the relevant public will not perceive the contested sign as being formed by the letters ‘MAG’ and the letters ‘NA’ but as the entire indivisible word ‘MAGNA’ (be it meaningful or not), whose structure clearly differs from the earlier mark ‘MAG-LITE’ formed by the two clearly independent hyphenated words.

In view of the above, the signs are deemed similar to an average degree even where ‘LITE’ is perceived as a descriptive element. The degree of similarity is lower for the part of the public that pays more attention to the element ‘LITE’ because it is not perceived as a descriptive element.

Aurally, the coinciding letters ‘MAG’ will be pronounced identically by an important part of the public (such as the English- or German- speaking public) and that same public is likely to pronounce ‘LITE’ of the earlier mark in the English manner namely /lait/. For this part of the public, the signs are pronounced /mag-lait/ and /mag-na/, both in two syllables, the first ones being the same and the second ones coinciding in the vowel sound /a/ and differing in the sounds /n/ of the contested mark and /l*it/ of the earlier sign. For this part of the public, the signs are aurally similar to an average degree.

The above is the hypothesis where the signs are most similar aurally. For other parts of the public there are further differences. For instance, part of the French-speaking public will pronounce the contested sign as /mania/ and/or an important part of the public will not use the English pronunciation for the earlier mark’s ‘LITE’, which will then be pronounced as /li-te/ or /lit/ not having any sounds in common with the contested mark.

Conceptually, for a part of the public, a conceptual comparison is not possible because neither of the signs has a meaning.  This is, for instance, the case of the French-speaking public. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

For another part of the public, only one of the marks has a meaning, therefore the signs are not conceptually similar. This is the case, for instance of the English-speaking public that only understands the meaning of ‘LITE’ in the earlier mark. Finally, part of the public may associate the signs with two different meanings such as the Maltese public, which understands ‘MAGNA’ as ‘machine’ and ‘LITE’ as ‘light’. For this part of the public, the signs are conceptually dissimilar.

In view of the above, the requirement that the signs be similar is fulfilled.

3. The ‘link’ between the signs

As seen above, the earlier marks ‘MAG-LITE’ are reputed to a certain extent and the signs are visually and aurally similar to, at most, an average degree, for a part of the public.

In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

In the present case, while the relevant sections of the public for the goods covered by the contested mark, namely illuminants; candles, tapers, night-lights and wicks; wax for industrial use, and those for which the earlier marks enjoy reputation, namely flashlights, overlap to some extent, at least for some of them, these goods are very much apart as regards their natures (and methods of use), usual distribution channels and usual producers.

The opponent argues that the contested illuminants cover lights, lamps and bulbs and provides dictionary definitions as well as the images resulting from a search in ‘Google’ to support its argument that the goods are identical. Even though the Nice Classification serves only administrative purposes, the context of Class 4 must be taken into consideration to interpret the scope of protection of the term. Illuminants in Class 4 are preparations and materials that can be ignited in order to produce illumination namely they are non-electrical illuminants, and they include mainly fuels and oils for lighting, as well as candles. Along the same lines, the contested night-lights also in Class 4 refer to candles. Indeed, the term night-light in the alphabetical list of Class 4 of the Nice classification is always specified with the addition ‘candle’ as in ‘Nightlights [candles]’ whereas ‘Electric night lights’, ‘Night lights [other than candles]’ are classified in Class 11. For the sake of completeness it is noted that this was already the case in the 10th edition (2011) of the Nice Classification which was in force at the date of filing of the contested trade mark application.

The opponent’s arguments are, therefore, set aside. In the Opposition Division’s view, not only are the contested goods not identical or even similar to the goods for which the earlier marks are reputed, but they are, as previously mentioned, very much apart. In particular, their natures are clearly different, being electrical apparatus on the one hand versus candles, wicks and wax, on the other hand, which are clearly not electrical and cannot even be described as ‘apparatus’. This weighs strongly against the likelihood that the contested trade mark may bring the earlier marks to the mind of the relevant public.

Furthermore, the signs are visually and aurally similar to an average degree because of their first three letters ‘MAG’ but the differences between them in the remaining letters as well as in their structure are clearly and immediately perceptible. In particular, the difference in the structure of the signs, namely the fact that the letters in question form an independent element in the earlier mark whereas they will not be singled out from the remaining letters ‘NA’ in the contested sign, weighs strongly against a link in the minds of the consumers.

Finally, the evidence submitted by the opponent leads to establish that the earlier marks ‘MAG-LITE’ enjoy some reputation however, on the basis of such evidence, this reputation is not particularly high.

Therefore, weighing up all the relevant factors of the present case, the Opposition Division concludes that the differences between the signs, as well as between the goods, are too marked, and the reputation of the earlier marks is not sufficiently high, for the relevant public to make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. In other words, the image of the earlier marks reputed for flashlights will not come to the mind of the relevant public upon seeing the contested trade mark when used in relation to illuminants, candles, wicks and wax.

In any case, the Opposition Division also notes that the opponent did not provide within the period for substantiating its claims, sufficient facts, arguments or evidence which could support the conclusion that 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.

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).

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, the opponent did not submit any facts, arguments or evidence that could convincingly support the conclusion that use of the contested trade mark in relation to candles and illuminants would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks in relation to flashlights. Indeed the opponent just alleges that ‘the applicant will take advantage of the success of the opponent and exploit the good reputation that the opposing trade marks have developed in the mark’. Considering the differences between the goods, the degree of the similarity between the signs and the degree of reputation of the earlier marks, there seems to be no good reason to assume that use of the contested trade mark will result in any unfair advantage occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen 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.

In view of all the foregoing, the opposition is not well founded under Article 8(5) EUTMR either and must be rejected under those grounds. Accordingly, for the sake of Article 8(5) EUTMR, there is no need to examine the evidence submitted in support of the genuine use of the earlier trade marks.

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.

1. The goods

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

EUTM No 18 606 ‘MAG’

Class 9:        Accessories for lighting apparatus, in particular flashlights (torches).

Class 11:        Lighting equipment, in particular flashlights (torches), including parts and accessories for the aforesaid goods.

EUTM No 18 721 ‘MAG-LITE’

Class 9:        Accessories for lighting apparatus, in particular pocket torches.

Class 11:        Lighting equipment, in particular pocket torches, including parts and accessories for the aforesaid goods.

DE trade mark No 39 726 136 ‘MAG-NUM STAR’

Class 11: Bulbs for flashlights.

DE trade mark No 1 115 163 ‘MAG-LITE’

Classes 9/11:        Flashlights, bulbs for flashlights, accessories for flashlights, namely halters, lenses, charging devices, electric input and output cables, batteries and potential transformers.

DE trade mark No 2 096 600 ‘MAG’

Class 11:        Flashlights, electric torches and other lighting apparatus, as far as included in Class 11.

The contested goods are the following:

Class 4:        Illuminants; candles, tapers, night-lights and wicks; wax for industrial use.

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 4

The opponent’s goods cover lighting equipment and accessories for the latter belonging to Class 11 (such as bulbs, halters and lenses) and Class 9 (such as chargers, cables, batteries and transformers). Flashlights, for instance, are hand-held portable light sources, in which the light is produced by a small incandescent light bulb or a light emitting diode and which use batteries or electrical cables for charging.

The contested goods are illuminants, candles, wicks and wax.

The opponent’s lighting apparatus and their accessories in Classes 9 and 11 differ from the contested illuminants; candles, tapers, night-lights in their natures and methods of use as well as in their producers and distribution channels and they are not complementary (the lighting equipment in Class 11 does not use illuminants such as fuel or lighting oil to produce light). The mere fact that these goods are used for illuminating is not sufficient to counteract such major differences and find similarity between them. Indeed because of their clearly different methods of use the goods at issue are neither in competition nor interchangeable. In addition, even if these goods are intended for producing light, there are some differences in their actual purposes since the contested goods are normally used for lighting as a last resource, when no electrical devices are available or for the purpose of creating a pleasant, welcoming atmosphere. Therefore, the contested candles, tapers and night lights (the latter two being candles as well) are dissimilar to all of the opponent’s goods.

The contested wax for industrial use, wicks are even further part from the opponent’s lighting apparatus and their accessories in Classes 9 and 11 since that they are not finished goods but parts of candles or other wax-based goods. The goods at issue differ in their natures and methods of use as well as in their purposes, usual distribution channels and producers. They are neither complementary nor in competition. Therefore these goods are also dissimilar.

Therefore, all of the contested goods are dissimilar to the goods on which the opposition is based.

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 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Given the dissimilarity of the goods, this conclusion would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness or if the opponent proved the existence of a family of marks, as claimed. Therefore, it is unnecessary to examine such claims and the related evidence.

Similarly, given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent. For the sake of completeness it is noted that the evidence submitted including the evidence in support of reputation as previously mentioned and the additional evidence sent in support of genuine use exclusively relate to flashlights and their accessories, which are clearly dissimilar, for the reasons previously mentioned, to all the contested goods.

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

Frédérique SULPICE

Catherine MEDINA

Begoña URIARTE VALIENTE

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.