ONEPLUS | Decision 2327339 – Techtronic Power Tools Technology Limited v. SHENZHEN ONEPLUS SCIENCE & TECHNOLOGY CO., LTD.

OPPOSITION No B 2 327 339

Techtronic Power Tools Technology Limited, Trident Chambers, P O Box 146, Road Town, Tortola, British Virgin Islands (opponent), represented by Marks & Clerk LLP, 1 New York Street, Manchester M1 4HD, United Kingdom (professional representative)

a g a i n s t

Shenzhen Oneplus Science & Technology Co., Ltd., A201, Administration Office Building of Qianhaishengang Cooperative Zone, No.1 Liyumen Street, Qianwan 1st Road, Qianhaishengang Cooperative Zone, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax, West Yorkshire HX1 2HY, United Kingdom (professional representative).

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

DECISION:

1. Opposition No B 2 327 339 is partially upheld, namely for the following contested goods and services:

Class 9: Computers; computer peripheral devices; laptop computers; time recording apparatus; phototelegraphy apparatus; neon signs; portable telephones; intercommunication apparatus; satellite navigational apparatus; cabinets for loudspeakers; television apparatus; camcorders; dvd players; in-ear headphones; headphones; surveying apparatus and instruments; cameras [photography]; telephone wires; materials for electricity mains [wires, cables]; integrated circuits; converters, electric; plugs, sockets and other contacts [electric connections]; connections, electric; video screens; protection devices for personal use against accidents; alarms; eyeglasses; galvanic cells; battery chargers; mobile phones; phone covers [specifically adapted]; cases for mobile phones; bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; smartphone mounts; connection cables; battery chargers for use with mobile phones; wireless headsets for mobile phones and tablet computers; wearable digital electronic devices in the form of a wristwatch, wrist band or bangle capable of providing access to the internet and for sending and receiving phone calls, electronic mails and messages; wearable electronic handheld devices in the form of a wristwatch, wrist band or bangle for the wireless receipt, storage and/or transmission of data and messages and for keeping track of or managing personal information; none of the aforesaid goods including speakers related to home, professional, marine or automotive use.

Class 37: Repair information; electric appliance installation and repair; installation, maintenance and repair of computer hardware; interference suppression in electrical apparatus; photographic apparatus repair; telephone installation and repair.

Class 38: Message sending; cellular telephone communication; electronic mail; computer aided transmission of messages and images; information about telecommunication; providing telecommunications connections to a global computer network; providing user access to global computer networks; providing internet chatrooms; providing access to databases; transmission of digital files.

2. European Union trade mark application No 12 280 996 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 280 996. The opposition is based on European Union trade mark registrations No 4 247 995, No 9 839 259 and No 10 277 101, and two United Kingdom non-registered trade marks, ‘ONE+’ and ‘ONE PLUS’. The opponent invoked Articles 8(1)(b) and 8(5) for the earlier European Union trade marks and Article 8(4) EUTMR for the two United Kingdom non-registered trade marks.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR: European Union trade mark registration No 9 839 259

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 9 839 259.

The goods and services

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

Class 7: Machines and machine tools; power operated tools; electric power tools; rechargeable electric power tools; power operated saws and cutting tools; electrically operated handsaws; power operated drilling tools; power operated hammers; power operated screwdrivers, spanners and wrenches; stationary woodworking machines or bench top tools; saws; cross cut and mitre saws; table saws; radial pull saws; precision circular saws; circular saws; jig saws; scroll saws; bandsaws; wood turning lathes; circular bench saws; spindle moulders; portable power tools and parts and fittings therefor; drills; impact drills; cordless drills; coring machines; belt sanders; sanders; dust collectors; abrasive machines; air brushes; lawnmowers; mower blades; trimmers for garden use; blowers for garden use; mulchers; edgers for garden use; brush cutters; shredders (machines); log splitters; tillers; cultivators; snow removal machines; apparatus for cleaning carpets; apparatus for cleaning upholstery; machines and apparatus for use in cleaning carpets and floors; cleaning apparatus utilizing steam; electric polishing implements; electric vacuum cleaners; rechargeable electric vacuum cleaners; floor buffing machines; floor polishing machines; floor scouring machines; electric kitchen machines; pressure washing machines and apparatus; pumps (machines and parts of machines); generators; water pumps; electric motors; parts and fittings for all the aforesaid goods.

Class 8: Hand tools, implements and parts and fittings therefor; hand-operated tools; mounting and fastening devices (hand operated); hand-operated tools for drilling; hand-operated apparatus for cutting; abrasive hand-operated tools; hand saws; hand shears; hand tools for inserting nails and staples; hand tools for use in carpentry and joinery; hand tools for use in decorating; hand tools for use in the garden; planers (hand tools); hammers; spanners; wrenches; screwdrivers; demolition hammers; saws; sanders; parts and fittings for all the aforesaid goods.

Class 9: Electrical control apparatus; television apparatus; apparatus for recording, transmission, storage and reproduction of sounds and/or images; automatic access security apparatus; accumulators; actuators; adapters for use with electric plugs; alarm apparatus and systems; amplifiers; antennae; apparatus for controlling temperature; apparatus for detecting metal pipes and wires in walls; measuring apparatus and instruments; measuring converters; apparatus for measuring distance; apparatus for lighting control; apparatus for monitoring electrical components; apparatus for testing electrical circuits; laser measuring apparatus and instruments; detectors; inspection devices connected to cameras; digital multimeters; voltage measuring clamps and forks; current measuring clamps and forks; voltage detectors, and parts and accessories thereof; carpenter’s levels, namely, battery powered plumb lasers, motorized rotary levels, box levels, masonry levels, i-beam levels, torpedo levels and utility levels, tape measures; rulers; straight rulers; folding rulers; hydrometers; voltmeters; hypsometers; barometers; thermometers; batteries; battery chargers, parts and fittings for all the aforesaid goods.

Class 11: Apparatus for lighting, heating, cooking, refrigerating and ventilating; ionization apparatus for the treatment of air; air conditioners; air conditioning apparatus and installations; air dehumidifiers; air filtering apparatus; air purifying apparatus; apparatus for filtering water; apparatus for softening water; sterilization apparatus; cooking apparatus, installations and appliances; appliances for heating beverages; lights; flashlights; lamps; torches; parts and fittings for all the aforesaid goods.

The contested goods and services are the following:

Class 9: Computers; computer peripheral devices; computer software, recorded; laptop computers; computer game programs; time recording apparatus; phototelegraphy apparatus; neon signs; portable telephones; intercommunication apparatus; satellite navigational apparatus; cabinets for loudspeakers; television apparatus; camcorders; dvd players; in-ear headphones; headphones; surveying apparatus and instruments; cameras [photography]; telescopes; telephone wires; materials for electricity mains [wires, cables]; integrated circuits; converters, electric; plugs, sockets and other contacts [electric connections]; connections, electric; video screens; protection devices for personal use against accidents; alarms; eyeglasses; galvanic cells; battery chargers; animated cartoons; mobile phones; phone covers [specifically adapted]; cases for mobile phones; bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; smartphone mounts; connection cables; battery chargers for use with mobile phones; wireless headsets for mobile phones and tablet computers; wearable digital electronic devices in the form of a wristwatch, wrist band or bangle capable of providing access to the internet and for sending and receiving phone calls, electronic mails and messages; wearable electronic handheld devices in the form of a wristwatch, wrist band or bangle for the wireless receipt, storage and/or transmission of data and messages and for keeping track of or managing personal information; none of the aforesaid goods including speakers related to home, professional, marine or automotive use.

Class 35: Advertising; on-line advertising on a computer network; business management consultancy; organization of exhibitions for commercial or advertising purposes; marketing research; import-export agencies; sales promotion for others; procurement services for others[purchasing goods and services for other businesses]; relocation services for businesses; office machines and equipment rental; photocopying services; data search in computer files for others.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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

The contested battery chargers; none of the aforesaid goods including speakers related to home, professional, marine or automotive use are included in the broad category of the opponent’s battery chargers. Therefore, they are identical.

The contested computers; laptop computers; phototelegraphy apparatus; portable telephones; intercommunication apparatus; television apparatus; camcorders; dvd players; in-ear headphones; headphones; cameras [photography]; telephone wires; video screens; mobile phones; wireless headsets for mobile phones and tablet computers; wearable digital electronic devices in the form of a wristwatch, wrist band or bangle capable of providing access to the internet and for sending and receiving phone calls, electronic mails and messages; wearable electronic handheld devices in the form of a wristwatch, wrist band or bangle for the wireless receipt, storage and/or transmission of data and messages and for keeping track of or managing personal information; none of the aforesaid goods including speakers related to home, professional, marine or automotive use are included in the broad category of the opponent’s apparatus for recording, transmission, storage and reproduction of sounds and/or images. Therefore, they are identical.

The contested time recording apparatus; satellite navigational apparatus; surveying apparatus and instruments; none of the aforesaid goods including speakers related to home, professional, marine or automotive use are included in the broad category of the opponent’s measuring apparatus and instruments. Therefore, they are identical.

The contested alarms; none of the aforesaid goods including speakers related to home, professional, marine or automotive use are included in the broad category of the opponent’s alarm apparatus and systems. Therefore, they are identical.

The contested converters, electric; none of the aforesaid goods including speakers related to home, professional, marine or automotive use overlap with the opponent’s adapters for use with electric plugs as some electric convertors are adapted for use in plugs and some adapters for use with plugs are for converting electrical energy from, for example for changing one voltage to another. Therefore, they are identical.

The contested battery chargers for use with mobile phones; none of the aforesaid goods including speakers related to home, professional, marine or automotive use are included in the broad category of the opponent’s battery chargers. Therefore, they are identical.

The contested galvanic cells; none of the aforesaid goods including speakers related to home, professional, marine or automotive use are included in the broad category of the opponent’s batteries. Therefore, they are identical.

The contested materials for electricity mains [wires, cables]; integrated circuits; plugs, sockets and other contacts [electric connections]; connections, electric; connection cables; phone covers [specifically adapted]; cases for mobile phones; bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; smartphone mounts; none of the aforesaid goods including speakers related to home, professional, marine or automotive use are included in the broad category of the opponent’s parts and fittings for all the aforesaid goods [apparatus for recording, transmission, storage and reproduction of sounds and/or images]. Therefore, they are identical.

The contested cabinets for loudspeakers; none of the aforesaid goods including speakers related to home, professional, marine or automotive use are essential parts of different types of loudspeakers. As such, they are used in combination with the opponent’s amplifiers which, as a broad category, includes loudspeakers. Although they can be sold separately, they can be produced by the same undertakings and share the same origin, as well as the same distribution channels and consumers. Therefore, they are highly similar.

The contested neon signs; none of the aforesaid goods including speakers related to home, professional, marine or automotive use are similar to the opponent’s apparatus for lighting in Class 11. While they have different specific purpose, there is a degree of overlap as a neon sign will still light up. Furthermore, they have a similar method of use, can come from the same manufacturers and may be available via the same distribution channels.

The contested computer peripheral devices; none of the aforesaid goods including speakers related to home, professional, marine or automotive use cover items such as keyboards, mice and screens. Therefore, given that the Office cannot dissect ex officio similar goods from the applicant’s broad category, the category as a whole must be considered similar to the opponent’s apparatus for recording, transmission, storage and reproduction of sounds and/or images as at least some of them, namely screens, have a similar purpose, can come from similar producers and target the same customers.

The applicant’s computer software, recorded is that part of a computer system that consists of encoded information or computer instructions whilst the contested computer game programs are the same but just specifically intended for games.

The applicant’s animated cartoons are recorded entertainment content traditionally drawn by hand but nowadays being produced by several differing methods, for example computer animation and stop motion animation.

The applicant’s telescopes are devices that observe remote objects using electromagnetic radiation, for example x-rays, visible light, ultraviolet, infrared and radio waves.

The applicant’s protection devices for personal use against accidents are, being in Class 9, items for protection and include goods such as protective clothing, protective headgear, especially helmets, protective footwear, protective masks, protective eye wear, etc. The contested eyeglasses are devices worn by humans to correct deficiencies in their vision.

The opponent’s goods can be summarised as machines and machines tools in Class 7, hand tools and implements in Class 8, electrical control apparatus, apparatus for recording, transmission, storage and reproduction of sounds and/or images, automatic access security apparatus, measuring apparatus and instruments, apparatus for lighting control, batteries and battery chargers in Class 9 and apparatus for lighting, heating, cooking, refrigerating, ventilating, air treatment, water purifying and sterilizing in Class 11.

The contested computer software, recorded; computer game programs; telescopes; protection devices for personal use against accidents; eyeglasses; animated cartoons; none of the aforesaid goods including speakers related to home, professional, marine or automotive use are considered dissimilar to the opponent’s goods. Most of the opponent’s goods, for example those in Classes, 7, 8 and 11 are very remote from these items, and they have nothing in common. The opponent provided no specific argument other than to say they were similar to the opponent’s goods in Class 9. The Opposition Division disagrees. They have a different purpose to the opponent’s goods in Classes 7, 8, 9 and 11 (as summarised above). They are distributed through different channels and target different end consumers. Finally, they are manufactured by different producers and are not interchangeable or in competition with one another. The mere fact that some of the items, for example the computer software or the animated cartoons might appear on the opponent’s apparatus for recording, transmission, storage and reproduction of sounds and/or images is, given that on the market the producers of these goods do not overlap, not sufficient for a finding of similarity. Therefore, they are dissimilar.

Contested services in Class 35

The contested advertising; on-line advertising on a computer network; organization of exhibitions for commercial or advertising purposes; marketing research; sales promotion for others are dissimilar to the opponent’s goods. These services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the sale or promotion of their goods and services through newspapers, websites, videos, the internet, etc. The nature and purpose of these services are fundamentally different from the manufacture of goods. The opponent’s goods have been summarised above. It is clear that the abovementioned contested services and the opponent’s goods have different origins and purposes, target a different public, via different channels and are not complementary or in competition with one another. The fact that the opponent’s goods could appear in advertisements or, as argued by the opponent, will be involved and used when carrying out the services, is not considered a sufficient enough link to find similarity.

The remaining contested services in Class 35 are business management consultancy (the provision of advice on running and operating a company), import-export agencies (the provision of services relating to, usually, wholesale buying and selling across international borders), procurement services for others[purchasing goods and services for other businesses] (the provision of purchasing services for third parties), relocation services for businesses (the provision of assistance in the transfer of staff and/or operations for companies), office machines and equipment rental (the provision and/or rental of office machines such as photocopies and printers to companies), photocopying services (the provision of reproduction services), data search in computer files for others (the provision of services to find information in computer data). The arguments which have been developed above for the comparison of the contested advertising and sales promotion services and the opponent’s goods are equally valid here, and therefore these services are also dissimilar to the opponent’s goods.

Contested services in Class 37

The Office guidelines state that since by nature goods and services are dissimilar, a similarity between goods and their installation, maintenance and repair can only be established when:

it is common in the relevant market sector for the manufacturer of the goods to also provide such services; and
the relevant public coincides; and
installation, maintenance and repair of these goods are provided independently of the purchase of the goods (not aftersales services).

The Opposition Division is of the opinion that these conditions are met for all the contested services related to goods, namely electric appliance installation and repair; installation, maintenance and repair of computer hardware; interference suppression in electrical apparatus; photographic apparatus repair; telephone installation and repair; clock and watch repair.

Furthermore, as the Office has deemed that computers; laptop computers; portable telephones; television apparatus; camcorders; dvd players; cameras [photography]; video screens; mobile phones are included in the broad category of the opponent’s apparatus for recording, transmission, storage and reproduction of sounds and/or images, consequently, the contested electric appliance installation and repair; installation, maintenance and repair of computer hardware; interference suppression in electrical apparatus; photographic apparatus repair; telephone installation and repair are considered similar to the apparatus for recording, transmission, storage and reproduction of sounds and/or images as it is common in the relevant market sector for the manufacturer of the goods to also provide such services, the relevant public coincides and the services are provided independently of the purchase of the goods.

Likewise, the contested repair information, whilst not explicitly related to particular goods, is also found similar and this is for the same reasons as explained above, namely information regarding repairs is commonly provided in various sectors and specifically for some of the contested goods found identical to the opponent’s goods, the relevant public coincides and the services are provided independently of the purchase of the goods.

However, the contested clock and watch repair are found to be dissimilar to all the opponent’s goods. They are not services to which the opponent’s goods have any points of contact. All the earlier goods have different purposes and methods of use and none of them are likely to come from watchmakers, which could be expected to also provide the contested specific repair services. They target different customers via different outlets and they have no degree of complementarity.

Contested services in Class 38

The opponent’s apparatus for recording, transmission, storage and reproduction of sound and/or images are used to communicate audio or video information over a distance via radio waves, optical signals, etc., or along a transmission line. Consumers use apparatus for recording, transmission, storage and reproduction of sound and/or images when they want to communicate with others.

There is a link, therefore, between these goods in Class 9 and the contested services of message sending; cellular telephone communication; electronic mail; computer aided transmission of messages and images; providing telecommunications connections to a global computer network; providing user access to global computer networks; providing internet chatrooms; providing access to databases; transmission of digital files. They are similar because they are complementary, and although their nature is different, their purposes are similar and they may appear in the same distribution channels. Therefore, the above mentioned contested services are similar to a low degree to the above mentioned opponent’s goods in Class 9.

The contested information about telecommunication refers to the provision of advice about various telecommunication services. Such services can be provided by telecommunication operators; for example, when customers have problems with their internet connection or telephone line, they call the same companies (or outlet stores) from which the internet and telephone subscriptions were purchased. Since the opponent’s apparatus for recording, transmission, storage and reproduction of sound and/or images include devices in Class 9 for which telecommunication is needed, the Opposition Division finds the applicant’s services to be similar to a low degree to the opponent’s goods in Class 9, since such goods and services target the same relevant public.

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 and services found to be identical and similar to various degrees are directed at the public at large as well as professionals who in their daily work will also use such goods or services.

The degree of attention may vary from average to high depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

The signs


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 signs are as shown above. The word ‘SYSTEM’ present in the earlier mark will be a negligible element, because of its very small size.

The element ‘ONE’ present in both signs is, amongst other meanings, the English word for the first cardinal number. It will be understood as such throughout the entire relevant territory due to being a widely taught basic English word and also one extensively used. It is not descriptive of the characteristics of the goods or services in question nor it is otherwise weak, and is, therefore, of average distinctiveness.

The element ‘plus’ present in both signs (once as a symbol, once as a word) will be understood and will be perceived as being laudatory or augmentative in nature, to the extent that, in general, it indicates increased quality or quantity (26/11/2007, R 435/2007-1, PLUS; 16/11/2015, R 2187/2013-2, FILM PLUS / CINE+ et al., § 50, 07/07/2016, R 1685/2015-1, MobiPlus / Plus, § 41). Therefore, this element is weak.

The figurative elements of the earlier mark, namely the black background behind the word ‘ONE’ and the frame that surrounds the ‘+’ symbol, will be perceived as less distinctive decorative elements.

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

Visually, the signs are similar to the extent that they coincide in their verbal elements ‘ONE’. However these elements are presented in differing ways: in the earlier mark the ‘ONE’ is in upper case white letters on a black background whilst in the contested sign it appears in black title case letters. The sign’s differ visually in the earlier mark’s ‘+’ symbol whilst the contested sign has the word ‘PLUS’. Furthermore, they differ in their additional elements namely the earlier mark’s black background and frame. However, the figurative elements of both marks (the letter stylisation in both marks and background shapes of the earlier mark) have little significance as they are purely decorative and fairly common.

Therefore, the signs are similar to an average degree.

Aurally, and given that the word ‘SYSTEM’ is negligible, the pronunciation of the signs is identical.

Conceptually, and again bearing in mind that the word ‘SYSTEM’ is negligible, the signs are conceptually identical.

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

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

Global assessment, other arguments and conclusion

The contested goods and services have been found to be partially identical, partially similar to various degrees and partially dissimilar. The signs have been found to be visually similar to an average degree and aurally and conceptually identical.

They coincide in the signs most distinctive element, the word ‘ONE’, and also coincide aurally and conceptually, if not visually, in the ‘+’ symbol / word ‘PLUS’, although for completeness it should be kept in mind that this element is weak.

Given that consumers will have no option but to pronounce the signs identically and will have an identical meaning invoked when thinking about them, the Opposition Division finds that there is a likelihood of confusion on the part of the public. Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark No 9 839 259.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical, highly similar or similar to the goods of the earlier trade mark. Furthermore, owing to the overall high degree of similarity between the signs, as detailed above in section c) of this decision, the opposition is also successful insofar as the lowly similar goods are concerned and even in those cases where the goods are for professionals and the level of attention is high.

The rest of the contested goods and services 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 ground and this article and directed at these goods and services cannot be successful.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based the opposition on the following earlier marks:

European Union trade mark registration No 4 247 995 for the figurative mark ;

European Union trade mark registration No 10 277 101 for the word mark ‘ONE+’.

As both these trade marks cover slightly different goods, the Opposition Division will continue with the examination on the ground of Article 8(1) EUTMR in respect of the goods and services found to be dissimilar so far. The Opposition Division finds it appropriate to now continue the opposition in relation to the opponent’s European Union trade mark registration No 10 277 101.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR: European Union trade mark registration No 10 277 101

The goods and services

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

Class 7: Electrical drills; electric hand drills; drill drivers [power tools]; electric hammer drills; hammer drivers [power tools]; electric screwdrivers; electric percussion drills [machines or parts of machines]; impact drills [machines or parts of machines]; impact drivers [power tools]; electric lithium-ion drills and screwdrivers; electric autoshift drills; electric rotary hammer drills; drill presses [power tools]; grinders [hand-held power driven tools]; bench grinders [hand-held power driven tools]; cutters being machine tools or parts of machines; cutters being powered by mains electricity or batteries; brush cutters [machines]; hot air guns [electric]; power-operated spray guns; electric planers; power washers [machines]; pressure washers [machines]; bearing washers [machines]; routers [machines or parts for machines]; electric sanders; belt sanders [machines]; sheet sanders [machines]; orbital sanders [machines]; saws; hole saws [machines]; reciprocating saw [machines]; circular saws; tile saws [power tools]; table saws [power tools]; chain saws; power-operated sprayers; power-operated paint sprayers; power operated sprayers for liquids; vacuum cleaners; power-operated blowers; shredders [machines]; vacuum shredders for clearing debris; screwdriver bits for electric screwdrivers and machines; drill bits for machines; spade bits for machines; brad point bits for machines; quick change drill bits for machines; quick change masonry bits for machines; quick change screwdriver bits for electric screwdrivers and machines; tile and glass bits for machines; holders for machine tools; tool holders [parts of machines]; chucks [parts of machines]; chuck adaptors [parts of machines]; nut drivers [machines]; machine guides [parts of machines]; screw guide [parts of machines]; countersinks [power tools]; blades [parts of machines]; wrench blades [parts of machines]; lawnmower blades [parts of machines]; saw blades [parts of machines]; teeth blades [parts of machines]; shear blades [parts of machines]; grass shrubber blades [parts of machines]; tables for machines; stands for machines; roller stands for machines; roller ball stands for machines; multifunctional stands for use with power saws; stands for power saws; keyed chucks [parts of machines]; quick change chucks [parts of machines]; chuck keys [parts of machines]; log splitters [machines]; cultivators [machines]; tree pruners [machines]; shredders [machines]; electric grass shears; trimming machines; lawn trimming machines; garden trimming machines; hedge trimming machines; lawn mowers; mulching plugs for lawn mowers [parts of machines]; plastic cutting lines for use in apparatus for cutting grass; spool cover and head [parts of machines]; transmission chains other than for land vehicles; spools of metal [parts of machines]; non-metallic spools [parts of machines]; lawn and garden string trimmer spools; impact shredders [machines]; machines for laying mulches upon the ground; machines for use in gardening; mandrels [parts of machines]; pumps [machines]; oil free pumps [machines]; pumps [parts of machines, engines or motors]; oil free pumps [parts of machines, engines or motors]; pump heads [parts of machines]; hammer drills; rotary tools [machines]; nailing machines; parts and fittings for all the aforesaid goods; bags adapted for carrying electric drilling and fastening tools; holsters for electric drilling and fastening tools.

Class 8: Drills; screwdrivers; percussion drills [hand-operated tools]; impact drills [hand-operated tools]; lithium-ion drills and screwdrivers [hand-operated tools]; autoshift drills [hand-operated tools]; rotary hammer drills [hand-operated tools]; hand-operated drill presses; cutters; guns [hand tools]; caulking guns; spray guns [hand-operated tools]; planers [hand tools]; routers [hand-operated tools or parts for hand-operated tools]; sanders [hand tools]; saws [hand-operated]; hole saws [hand-operated]; reciprocating saw [hand-operated]; hand-pumped sprayers; screwdriver bits for hand-operated screwdrivers; drill bits for use in hand tools; spade bits for use in hand tools; brad point bits for use in hand tools; quick change drill bits for use in hand tools; quick change masonry bits for use in hand tools; quick change screwdriver bits for use in hand tools; tile and glass bits for use in hand tools; holders for hand tools; chucks for hand-operated tools; chuck adaptors for hand-operated tools; nut drivers [hand tools]; countersinks [hand tools]; blades [hand tools]; wrench blades [parts of hand tools]; saw blades [parts of hand tools]; blades for shears; keyed chucks for hand-operated tools; quick change chucks for hand-operated tools; chuck keys for hand-operated tools; hex keys; allen keys; log splitters [hand-operated tools]; cultivators [lawn and garden tools]; pruners [hand tools]; garden pruners [hand tools]; shredders [hand-operated tools], other than for kitchen use; gardening shears and scissors; loppers [hand tools]; impact shredders [hand-operated tools], other than for kitchen use; centre punches [hand tools]; rotary tools [hand-operated tools]; tool belts [holders]; tool bags [filled]; parts and fittings for all the aforesaid goods.

Class 9: Electrical plugs and sockets; electrical power adaptors; levelling instruments; plumb levels; leveling plumb (Cross Laser) with tripod; leveling plumb (Cross Laser); meters; digital multi-meters; thermometers, not for medical purposes; infrared thermometers; laser sighted thermometers; sensors for use with machine tools; stud sensors; laser pointers; ultrasonic measuring apparatus; lasers, not for medical purposes; self-leveling lasers, not for medical purposes; calculators with laser pointer and voice recording function; batteries; battery chargers; battery charging apparatus; battery chargers for traveling; mobile phone chargers; MP3 players; headphones; noise suppression headphones; radios; CD players; clothing, footwear, headgear, helmets, gloves, belts, goggles, all of a protective nature; UV filter sunglasses; parts and fittings for all the aforesaid goods.

Class 11: Torches; flashlights; lamps; lighting apparatus and installations; parts and fittings for all the aforesaid goods.

The contested goods and services are the following:

Class 9: Computer software, recorded; computer game programs; telescopes; protection devices for personal use against accidents; eyeglasses; animated cartoons; none of the aforesaid goods including speakers related to home, professional, marine or automotive use.

Class 37: Clock and watch repair.

Contested goods in Class 9

The contested protection devices for personal use against accidents; none of the aforesaid goods including speakers related to home, professional, marine or automotive use overlap with the opponent’s clothing, footwear, headgear, helmets, gloves, belts, goggles, all of a protective nature. Therefore, they are identical.

The contested eyeglasses; none of the aforesaid goods including speakers related to home, professional, marine or automotive use are highly similar to the opponent’s UV filter sunglasses. These goods have a similar nature, the same method of use, may come from the same producers, will target the same customers and are available at the same outlets.

The applicant’s telescopes are devices that observe remote objects using electromagnetic radiation, for example x-rays, visible light, ultraviolet, infrared and radio waves.

The opponent’s goods can be summarised as machines and machines tools in Class 7, hand tools and implements in Class 8, plugs and sockets, measuring apparatus and instruments, calculators, batteries, battery chargers, various specific audio visual electronic devices, protective clothing, footwear and headgear and UV filter sunglasses in Class 9 and torches, flashlights, lamps and lighting apparatus and installations in Class 11.

The contested computer software, recorded; computer game programs; telescopes; protection devices for personal use against accidents; eyeglasses; animated cartoons; none of the aforesaid goods including speakers related to home, professional, marine or automotive use are considered dissimilar to the opponent goods. Most of the opponent’s goods, for example those in Classes, 7, 8 and 11 are very remote from these items, and they have nothing in common. The opponent provided no specific argument other than to say they were similar to the opponent’s goods in Class 9. The Opposition Division again disagrees. They have a different purpose to the opponent’s goods in Classes 7, 8, 9 and 11 (as summarised above). They are distributed through different channels and target different end consumers. Finally, they are manufactured by different producers and are not interchangeable or in competition with one another. The mere fact that some of the items, for example the computer software or the animated cartoons might appear on some of the opponent’s specific audio visual electronic devices is not, given that on the market the producers of these goods do not overlap, is insufficient for a finding of similarity. Therefore, they are dissimilar.

Contested services in Classes 35 and 37

The opponent’s goods from European Union trade mark registration No 10 277 101, whilst differing in some particulars, do, however, still cover the same four groups of goods, namely goods in Classes 7, 8, 9 and 11 (and summarised above) as appeared in the previous earlier right examined above, namely European Union trade mark registration No 9 839 259.

The contested services are advertising and sales promotion, the provision of advice on running and operating a company, the provision of services relating to buying and selling across international borders, the provision of purchasing services for third parties, the provision of assistance in the transfer of staff and/or operations for companies), the provision and/or rental of office machines such as photocopies and printers to companies, the provision of reproduction services and the provision of services to find information in computer data (all in Class 35) and clock and watch repair (in Class 37).

The same arguments used above when comparing these services and the opponent’s goods from the earlier European Union trade mark registration No 9 839 259 are equally valid here. The contested services have no points of contact with the earlier right’s goods and they are found to be dissimilar.

Relevant public — degree of attention

In the present case, the goods found to be identical and similar to various degrees are directed at the public at large as well as professionals who in their daily work will also use such goods, for example workers requiring protective clothing.

The degree of attention may vary from average to high depending on the price, specialised nature, or terms and conditions of the purchased goods.

The signs

ONE+
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The signs are as shown above.

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

Visually, the signs are similar to the extent that they coincide in their verbal elements ‘ONE’. These elements are presented in slightly differing ways: in the earlier mark the ‘ONE’ it is in standard text, whilst in the contested sign it appears in black title case letters. The sign’s differ visually in the earlier mark’s ‘+’ symbol whilst the contested sign has the word ‘PLUS’. In word marks, as in this case the earlier mark is, the letter case in which they appear is irrelevant as it is the word itself which is protected and not its written form; the stylisation of the contested sign’s letters is minimal.

Therefore, as the differing parts of the signs are weak, the signs are similar to an above average degree.

Aurally, the pronunciation of the signs is identical.

Conceptually, the signs are conceptually identical.

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

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.

Global assessment, other arguments and conclusion

The contested goods and services have been found to be partially identical, partially highly similar and partially dissimilar. The signs have been found to be visually similar to an above average degree and aurally and conceptually identical.

Given that consumers will have no option but to pronounce the signs identically and will have an identical meaning provoked when thinking about them, the Opposition Division finds that there is a likelihood of confusion on the part of the public. Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark No 10 277 101 even if the level of attention is high.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and highly similar to the goods of the earlier trade mark.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

In respect of the remaining goods and services found so far to be dissimilar, the Opposition Division will now continue with the examination on the ground of Article 8(1) EUTMR in relation to the opponent’s European Union trade mark registration No 4 247 995. This will involve first examining the evidence of use.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of European Union trade mark No 4 247 995, Image representing the Mark .

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 20/12/2013. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 20/12/2008 to 19/12/2013 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 7: Power tools; power tool accessories; kit containing various power tools, power operated saws, cutting tools (including blades for machines); electrically operated handsaws; power operated hand-drilling tools; power operated screwdrivers; electrically operated spanners and wrenches; stationary woodworking machines and bench top tools; saws (machines); mitre saws, cross cut saws, table saws; radial pull saws; precision circular saw blades, circular saws; jig saws; scroll saws; band saws; wood turning lathes; circular bench saws; drills; impact drills; cordless drills; screwdrivers; files; belt sanders; sanders; air brushes (electrically operated); machines and apparatus for cleaning carpets (electrically operated), apparatus for cleaning upholstery, machines and apparatus for cleaning carpets and floors; cleaning apparatus utilizing steam, electric vacuum cleaners; rechargeable electric vacuum cleaners; machines for cleaning carpets and floors; floor buffing machines; electric kitchen knives, electric carving knives; brush cutters; grass trimmers, hedge trimmers; lawn mowers, rakers, edgers; cultivators; tree pruners, tree branch pruners; pressure washers; shredders for household use; chainsaws; mulching blower vacuums; blower vacuums; hand-held vacuum cleaners; upright vacuum cleaners; canister vacuum cleaners; power operated sprayers (machines); power operated generators; storage bags for aforementioned goods.

Class 9: Battery packs, battery charger; measuring tools, apparatus for measuring distance; dimmers (electric); apparatus for testing electrical circuits, measures, electric measuring apparatus; optical apparatus and instruments; testing instruments for electric apparatus; storage bags for aforementioned goods.

Class 11: Flashlight.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 29/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 03/04/2016 to submit evidence of use of the earlier trade mark. This deadline was subsequently extended to 05/05/2016. On 27/04/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Annexure A – Various catalogues, brochures and leaflets from the United Kingdom, Germany, Sweden and Italy, dated between 2010 and 2013. They show the earlier mark (sometimes in green, sometimes just as text, One Plus™ system) used alongside power tools for home and garden use. Some text from the English catalogue describes the goods as “a unique 18V tool range in which one battery and charger can be used with over 30 power and garden tools.” The house mark RYOBI appears on every page.
Annexure B – Extracts from several sales invoices from between 2009 and 2103 for customers in the United Kingdom (9 pages of extracts), Sweden (6 pages) and Latvia (1 page). [The one page referring to Norway will be ignored as this is outside the relevant territory.] The invoices show sales of goods such as drills, chain saw, angle grinders, corner sander, battery charger kit, spotlight, flash light. The prices are redacted but the UK invoices refer to wholesale sales so the individual sales are for quantities either in the tens or hundreds of units sold. The trade mark shown is as text either One+ or One Plus.
Annexure C – Five marketing invoices, all from the UK, one for the resizing of a One Plus advertisement (2008), two for the purchase of two ONE PLUS Tiered stands (both in 2013) and two payments for a celebrity to endorse Ryobi (2011).
Annexure D – Swedish press clips and screenshots from a TV program featuring Ryobi branded power tools. The earlier mark, or variants of it, does not appear in this evidence, and the goods appear with names such as Ryobi LCDI 18022B, Ryobi LCD 1402 14V, Ryobi CCG801MHG, Ryobi RMT 200, Ryobi RMT 1801.
Annexure E – Fourteen pages of extracts from the website WayBack Machine showing the opponent’s website from 2010 to 2013. The extracts show use of the mark as registered and also text versions for power and garden tools and battery packs.
Annexure F – A list of distributors and stockists from the United Kingdom, Germany, Sweden, Italy, Denmark, France, Poland and Spain. The document is an internal undated document.
Annexure G – Copies of three UK advertisements and one Irish advertisement dated from 2008 to 2010 showing the earlier mark or text variants used in conjunction with power and garden tools and battery packs.

The opponent also submitted evidence of reputation and evidence for Article 8(4) EUTMR as part of its further facts and evidence (on 10/09/2015). This evidence will also be taken into account as requested by the opponent. However, in regards to these pieces of evidence the opponent also requested to keep certain commercial data contained in them confidential vis-à-vis third parties. Consequently, the Opposition Division will describe these pieces of evidence only in the most general terms without divulging any such data.

Cover letter – Apart from the evidence below the cover letter made specific claims regarding turnover of goods sold under the ONE+ brand in the relevant territory during the years 2010 to 2015, which were in the order of millions of EUR. Likewise, the opponent claimed a substantial expenditure in promoting and advertising ONE+ branded products. This cover letter is not, however, a sworn certificate or affidavit, but rather a letter introducing the evidence and it was written and signed by the opponent’s representative and not a company official.
Annexure B – One page extract from the opponent’s website dated 30/07/2015. The extract refers to the history of the company TTI, but does mention the ONE+ range of power tools.
Annexure C – One page extract from the Stock Exchange of Hong Kong showing the share price for TTI shares on 29/07/2015. There is no mention of the earlier trade mark.
Annexure D – Eight pages taken from the TTI 2014 Annual Report, with three pages related to the ONE+ range of power and outdoor tools. However, all of the figures related to turnover, profit, etc. are related to the opponent and do not directly refer to the trade mark ONE+.
Annexure E – Two page extract dated 31/07/2015, from the opponent’s website listing TTI brands. There is no mention of the earlier trade mark.
Annexure F – Two page press release dated 04/10/2004 entitled TTI’s RYOBI Brand of Power Tools introduces new 18-Volt One+ System. The text, however, only refers to the United States of America.
Annexure G – Two page extract from the opponent’s website dated 17/07/2015, listing the RYOBI brand’s European websites, such as the United Kingdom, France, Germany, Italy and Spain. The extract does not mention the mark.
Annexure H – Ten page extract showing one page from the RYOBI websites for the United Kingdom, France, Germany, Spain, Sweden, Denmark, Finland, Poland, Portugal and Romania. The extracts are undated but do show the mark in relation to power and garden tools and battery packs.
Annexure I – Twelve redacted UK invoices dated 2011 to 2014, showing ONE+ power tools. One redacted Finnish invoice dated 09/09/2009, showing ONE+ power tools sold to Latvia. One redacted Swedish invoice dated 09/09/2009, showing ONE+ power tools. [The one page referring to Norway will be ignored as this is outside the relevant territory.] Three spreadsheets which appear as internal documents of the opponent listing their European distributors.
Annexure J – Photographs from shops in Italy, France, Spain, Germany, Sweden, Denmark and the United Kingdom showing RYOBI ONE+ branded power tools on shelves. Only one of the photographs is dated, 15/12/2010, but the opponent claims they are from the period 2008 through to 2013.
Annexure K – Extract from the whois database showing that the domain TTIGROUP.COM has been registered since 19/01/1999 and is currently in the name of TechTronic Industries Co. Ltd. The mark in question is not mentioned.
Annexure L – One page extract from the internet archive website WayBack Machine showing the RYOBI website. The mark in question is not mentioned.
Annexure M – Various extracts from the internet archive website WayBack Machine showing the RYOBI websites for Italy, Germany, France, the United Kingdom, Sweden, Poland, Denmark, Finland, Romania and Portugal from 2011 and for Spain from 2012. The extracts show use of the ONE+ mark in relation to power and garden tools and battery packs.
Annexure N – Four screenshots taken from the YouTube website showing videos entitled ‘Ryobi One+ TV Advert – Finnish’, ‘The Home Depot Ryobi One TV Commercial’, ‘Ryobi One+ Competition TV Advert’ and ‘Ryobi 18V One+ System’ which were published on the site between November 2013 and January 2015.
Annexure O – A printout dated 30/07/2015 from the RyobiTV YouTube channel listing 28 clips, 13 of which mention the mark ONE+ in their titles.
Annexure P – Various brochures, catalogues, flyers and billboards (some dated for example 2013, some undated) from Italy, France, Germany, Sweden, Denmark, and the United Kingdom, showing various indoor and outdoor tools, battery packs and flash lights.
Annexure Q – Extracts taken in 2015 from the Facebook pages operated by RYOBI Tools France and RYOBI Tools United Kingdom. They show use of the ONE+ mark.
Annexure R – Two pages of information and photographs showing a van tour of France carried out in 2015 for the brand RYOBI. The mark in question is not mentioned.

A part of the evidence shows that the place of use covers at least the United Kingdom, Germany, France, and Sweden. This can be inferred from the language of some of the documents as well as some addresses in the invoices. Therefore, the evidence relates to the relevant territory.

A sufficient amount of the evidence, for example the invoices, the WayBack Machine extracts, the catalogues, brochures and leaflets, is dated within the relevant period, and therefore this requirement is fulfilled.

The documents filed, taken as a whole, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The fact that the invoices are not particularly numerous and the actual sums involved have been redacted does not preclude that this requirement is met. It should be remembered that use of the mark need not be quantitatively significant for it to be deemed genuine. The invoices do show sales and show sales of multiple units (i.e. sales from the manufacturer to distributors). Therefore, whilst the evidence is not sufficient to prove the turnover figures referred to in the opponent’s cover letter dated 10/09/2015, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark. As far as the use of the mark as registered is concerned the use the mark alongside the additional verbal element ‘RYOBI’ and utilising colours does not alter the distinctive character of the registered trademark.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of the trade mark for the following goods:

Class 7: Power tools; power tool accessories; kit containing various power tools, power operated saws, cutting tools (including blades for machines); electrically operated handsaws; power operated hand-drilling tools; power operated screwdrivers; electrically operated spanners and wrenches; saws (machines); mitre saws, cross cut saws, table saws; radial pull saws; precision circular saw blades, circular saws; jig saws; scroll saws; circular bench saws; drills; impact drills; cordless drills; belt sanders; sanders; air brushes (electrically operated); machines and apparatus for cleaning carpets (electrically operated), apparatus for cleaning upholstery, machines and apparatus for cleaning carpets and floors; electric vacuum cleaners; rechargeable electric vacuum cleaners; machines for cleaning carpets and floors; floor buffing machines; brush cutters; grass trimmers, hedge trimmers; lawn mowers, rakers, edgers; chainsaws; mulching blower vacuums; blower vacuums; hand-held vacuum cleaners; upright vacuum cleaners; canister vacuum cleaners; power operated sprayers (machines).

Class 9: Battery packs, battery charger.

Class 11: Flashlight.

The remaining goods, namely stationary woodworking machines and bench top tools; band saws; wood turning lathes; screwdrivers; files; cleaning apparatus utilizing steam; electric kitchen knives, electric carving knives; cultivators; tree pruners, tree branch pruners; pressure washers; shredders for household use; power operated generators; storage bags for aforementioned goods in Class 7 and measuring tools, apparatus for measuring distance; dimmers (electric); apparatus for testing electrical circuits, measures, electric measuring apparatus; optical apparatus and instruments; testing instruments for electric apparatus; storage bags for aforementioned goods in Class 9, are not mentioned at all in the evidence, and, therefore, will not be taken into consideration.

Consequently, the Opposition Division will only consider the abovementioned goods for which the evidence shows genuine use of the trade mark in its further examination of the opposition.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR: European Union trade mark registration No 4 247 995

The goods and services

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

Class 7: Power tools; power tool accessories; kit containing various power tools, power operated saws, cutting tools (including blades for machines); electrically operated handsaws; power operated hand-drilling tools; power operated screwdrivers; electrically operated spanners and wrenches; saws (machines); mitre saws, cross cut saws, table saws; radial pull saws; precision circular saw blades, circular saws; jig saws; scroll saws; circular bench saws; drills; impact drills; cordless drills; belt sanders; sanders; air brushes (electrically operated); machines and apparatus for cleaning carpets (electrically operated), apparatus for cleaning upholstery, machines and apparatus for cleaning carpets and floors; electric vacuum cleaners; rechargeable electric vacuum cleaners; machines for cleaning carpets and floors; floor buffing machines; brush cutters; grass trimmers, hedge trimmers; lawn mowers, rakers, edgers; chainsaws; mulching blower vacuums; blower vacuums; hand-held vacuum cleaners; upright vacuum cleaners; canister vacuum cleaners; power operated sprayers (machines).

Class 9: Battery packs, battery charger.

Class 11: Flashlight.

The contested goods and services are the following:

Class 9: Computer software, recorded; computer game programs; telescopes; animated cartoons; none of the aforesaid goods including speakers related to home, professional, marine or automotive use.

Class 37: Clock and watch repair.

Contested goods and services in Classes 9, 35 and 37

As a result of the requirement to file proof of use, the goods for which the opponent’s earlier mark is deemed to have protection are a reduced subset of the opponent’s goods from the two other earlier rights already compared above. These earlier goods have already been compared with the remaining contested goods and services and they have been found to be dissimilar. This finding is equally valid here for this earlier right and its proven goods.

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

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The Opposition Division will now continue with the examination on the ground of Article 8(5) EUTMR.

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.

Reputation of the earlier trade mark

According to the opponent, all three earlier registered trade marks have a reputation throughout the European Union.

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 05/11/2013. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation. As the opponent claimed that the earlier trade marks are reputed for all the goods for which they are registered and as all the goods are already listed above, the Opposition Division will (for procedural economy) not list them again.

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 10/09/2015 the opponent submitted evidence to support this claim. The evidence has already been listed above and analysed but only in relation to the requirement of Article 42(2) and (3) EUTMR. The evidence will not be relisted here, but it will be re-evaluated in relation to the requirements under Article 8(5) EUTMR. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. For completeness, it should be mentioned that the evidence filed for proving use cannot be taken into account as it was filed after the deadline set by the Office for the opponent to substantiate the opposition.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

First, the Opposition Division notes that, to prove the reputation of a mark, it is not sufficient that the mark is used. Instead it needs to be shown that the mark is known by a significant part of the public concerned by the products covered by it.

In the present case, part of the evidence does not relate to the signs but rather relates to only TTI or TechTronic Industries which appears to be parent company of the opponent or RYOBI which appears to be a house mark. Specifically annexures C, E, G, K, L and R include no mention of the signs in question. There are similar issues in other items: annexure A only refers to the history of TTI and whilst it does mention the earlier marks for one of the Class 7 items for which it has protection, it does not make any indication of the longevity or history of these signs or the degree of recognition, it merely shows use in 07/2015 for one particular item; annexure D gives information on turnover, profit, assets, basic earnings per share and more, but it only provides this information at a company and global level, and there is no indication of how much of this is related to the signs or the territory in question, and how much relates to other marks and other territories. All this information is good for proving that the opponent is operating a going concern worldwide, but it is not capable of indicating the acquisition of a reputation within the European Union for the earlier marks upon which the opposition is based. Furthermore, any reputation or degree of recognition that the opponent might have for other marks (for example RYOBI which features heavily throughout the evidence) is irrelevant in the present case as this is not one of the earlier rights upon which the opposition is based.

Additionally, some of the evidence is dated after the filing date of the contested sign or is undated. This is the case with annexures B, C, E, G, H, N, O, Q and R. Finally, one of the items only refers to the United States of America, (annexure F).

The remaining items, namely the fourteen redacted invoices (annexure I), photographs from shops (annexure J, in which only ones is dated but we shall assume they all from the period claimed by the opponent, 2008 to 2013), extracts from websites (annexure M) and the selection of various printed articles such as brochures, catalogues, flyers and billboards (annexure P), clearly show the marks being used, but provide no indication of the degree of recognition of the relevant public.

The invoices are insufficient in number to indicate that sales are so large as to imply a significant market share has been acquired by goods under the earlier marks. Furthermore, they are insufficient to support the claims made in the opponent’s cover letter regarding turnover, because again the number of invoices and the volumes shown in them are too few and too low to support such a claim.

The extracts from the websites show that the mark was used in various European Union territories as far back as at least 2011, but without figures regarding the number of visits and page hits they do not assist in showing the public’s degree of recognition of the marks.

The evidence does not indicate the market share of the trade marks or provide concrete information on the extent to which the trade mark has been promoted. It does not include market surveys or opinion polls regarding the marks. Finally, the evidence originates almost entirely from the opponent, and there are no independent third parties items that refer to the marks and which begin to mention or inform the Opposition Division of the actual degree of recognition of the public of these marks.

Therefore, the Opposition Division is of the opinion that despite showing use of the earlier trade marks the evidence does not provide any real information on the extent of the public recognition of them.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected as far as it is based on this ground.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – 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.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The right under the applicable law

The opponent claims to have the right to prohibit the use of the international registration applied for under the law of passing off and based on two United Kingdom non registered trade marks, namely ONE+ and ONE PLUS.

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 will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the United Kingdom non-registered trade mark under the tort of passing off. It made one reference to a United Kingdom court case and then lists what it says are the requirements for passing off. However, the opponent did not furnish any copies of the presumed decision to which it makes reference or indeed any other document that could be understood as being the content (text) of the legal provision on which it claims as a basis for its opposition under Article 8(4) EUTMR.

It should be recalled that, even when it is clear that the opponent relies on national case-law to prove its case, it must provide the Office with this case-law in sufficient detail (a copy of the decision invoked) and not merely by references, quotations or extracts from decisions and publications somewhere in the legal literature. The proof of the source, namely the applicable law or indeed relevant case-law, is all the more important in a case of passing off that it is a common law tort. Moreover, treating the national legal situation as an issue of fact which is subject to proof by the party alleging such a right, is also justified by the fact that the Opposition Division is not always in a position to, in particular, monitor the corresponding changes of legislation or development of the case-law in all the Member States. In the present case, explicit and complete references to United Kingdom case-law as well as copies of decisions should have been submitted by the opponent. Pursuant to the previous cited Article 76(1) EUTMR, the opposition must be rejected already for these reasons.

For the sake of completeness, despite its common law roots, the passing off action is explicitly stated in section 5(4)(a) of the UK Trademark Act, under the other signs used in the course of trade which might prohibit the use of subsequent trade marks. However, the opponent did not base its opposition on section 5(4)(a), just as it did not provide any copy of the legal provision.

Lastly, it is again worth recalling that the onus is on the opponent to submit evidence as well as the opponent’s duty to collaborate when submitting evidence. According to Article 76(1) EUTMR and the limited power of examination of the Office, the filing of evidence must be sufficiently clear, precise, complete and reliable to enable the other party to exercise its right of defence and the Office to perform its examination, without reference to extraneous or supportive information. It is not the role of the first instance jurisdiction to check of its own motion the information regarding the national law currently in force. This is also justified by the general principle of equal treatment between the parties, i.e. that the Opposition Division must not act to favour one party.

It is true that the case law recognises that the Office has a certain power of verification. However, it is limited to ensuring the accurate application of the law relied upon by the opponent. It does not therefore discharge the opponent from the burden of proof and it cannot serve to substitute the opponent in adducing the appropriate law for the purposes of its case (see decision of 02/06/2014, R 1587/2013-4, GROUP, § 26 and decision of 30/06/2014, R 2256/2013-2, ENERGY, § 26).

In view of all the above, the opposition is, therefore, not well founded under 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. 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Alexandra APOSTOLAKIS

Ric WASLEY

Vita VORONECKAITĖ

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.

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