Storm smart technologies | Decision 2496241 – Content Guru Limited v. Kollman Group

OPPOSITION No B 2 496 241

Content Guru Limited, Radius Court, Eastern Road, Bracknell, Berkshire, RG12 2UP, United Kingdom (opponent), represented by Fieldfisher LLP, Riverbank House, 2 Swan Lane, London, EC4R 3TT, United Kingdom (professional representative)

a g a i n s t

Kollman Group, Str. Otilia Cazimir NR.15 700400, Iasi, Romania (applicant).

On 16/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 496 241 is partially upheld, namely for the following contested goods and services:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; fire-extinguishing apparatus.

Class 38: Telecommunications.

2. European Union trade mark application No 13 194 238 is rejected for all the above goods and services. It may proceed for the remaining goods.

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 13 194 238. The opposition is based on EU trade mark registrations No 5 675 236 and No 10 518 851, both for the word mark ‘STORM’. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR and in relation to another earlier right, namely the non-registered trade mark ‘STORM’, the opponent also invoked Article 8(4) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The goods and services

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

EU trademark registration No 5 675 236

Class 9: Computer hardware and computer software; computer installations, apparatus and instruments; computer systems; computer databases; data carriers; communications and security apparatus and instruments; computer software, firmware and hardware for use with computer networks; apparatus, instruments and media for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting and retrieving publications, text, signals, software, information, data, code, sounds and images; computer hardware, middleware and software to enable the hosting and management of telecommunications services; telecommunications hosting and management systems; multiple caller processing software and systems; multiple caller management software and systems; customer relations management software and systems; interactive voice response systems; computer hardware, software and telecommunications systems for the provision of unified messaging services, audio conferencing and facsimile transmission; telecommunications systems enabling the management, running and operation of communications applications; computerised telephony systems; telecommunications systems and computer hardware and software for financial transactions, transferring funds, accounting and billing; computer software and telecommunications apparatus to enable connection to databases and the Internet; telecommunications goods; but not including keyboards, keypads, encoders for use with keyboards and keypads, data input and data output devices, visual displays, voice activated data input devices, mountings and kits and enclosures for mounting the aforesaid goods and not including parts and fittings for the aforesaid goods.

Class 38: Telecommunications services; provision of telecommunication links, computer intercommunication, network communication services, computerised data communications; computerised telephony services; provision of telecommunication connections to global computer network; communication by computer terminals; data transmission services; providing telecommunications and communications connections to multiple caller processing software and systems, multiple caller management software and systems and customer relations management software and systems; provision of access to electronic commercial communications systems, electronic contractual systems, electronic contracts, data transmission systems, commercial communications networks; electronic transmission of data; electronic transmission of contractual agreements and other documentation; providing telecommunications and communications connections enabling access to and facilitating electronic commercial transactions; telecommunications services utilising media such as CD-Roms and the Internet, intranet and extranet technologies; transmission and reception of data and of information; telephone, facsimile, telex, message collection and transmission, radio-paging and electronic mail services; on-line information services relating to telecommunications; network services; providing computer access to communication networks; data interchange services; transfer of data by telecommunications; hire, leasing or rental of apparatus, installations or components for use in the provision of telecommunication services; hosting and management of telecommunications services; provision of unified messaging services, audio conferencing and facsimile transmission; provision of access to a communications facility enabling provision and use of communications and applications.

EU trademark registration No 10 518 851

Class 35: Advertising; business management; business administration; office functions; business management assistance; business organization and consultancy; professional business consultancy; business research; compilation of information into computer databases; systemization of information into computer databases; compilation of statistics; computerized file management; marketing research and studies; organization of exhibitions for commercial or advertising purposes; information, advisory and consultancy services relating to all the aforesaid; all of the aforesaid in relation to telecommunications services.

Class 36: Financial affairs; monetary affairs; payment processing services; electronic payment services; bank card, credit card, debit card, and electronic payment card services; payment administration services; automatic recording services for financial transactions; information, advisory and consultancy services relating to all the aforesaid.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer programming; consultancy in the field of computer hardware and software; all the aforesaid in the field of telecommunication including cloud-based communication and cloud-based technology services related to telecommunication; installation of computer software; maintenance of computer software; updating of computer software; computer system design; computer system analysis; creating and maintaining web sites for others; hosting web sites; design and development of communication systems; computer network services; design and development of computer networks; data security services; design and development of electronic data security systems; information, advisory and consultancy services relating to all the aforesaid.

The contested goods and services are the following:

Class 12: Vehicles; Apparatus for locomotion by land, air or water.

Class 38: Telecommunications.

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 nautical, photographic, cinematographic, optical, signalling apparatus and instruments are identical to apparatus for transmitting sounds in the same Class. These goods overlap.

The contested apparatus for recording, transmission or reproduction of sound or images are identical to the opponent’s apparatus for transmitting sounds and images also in Class 9. These goods are identical and/or overlap.

Apparatus for processing data of the earlier mark in Class 9 is identical to the contested teaching apparatus and instruments. They are included in the broad category, or overlap.

The contested calculating machines, data processing equipment are identical to the opponent’s apparatus for processing data. They are included in the broad category, or overlap.

The contested computer is identical to the opponent’s computer hardware. These goods overlap.

The contested magnetic data carriers are identical to media recording data of the opponent´s goods in the same class. They are included in the broad category, or overlap.

The contested measuring apparatus and instruments; surveying apparatus and instruments and the opponent´s apparatus, instruments for storing, processing, manipulating, transmitting information, data, and images are similar. These goods can be manufactured by the same companies; they can coincide in end user and distribution channels.

The contested life-saving apparatus and instruments are similar to apparatus for transmitting signals in the same class 9 as they have the same purpose. They can also coincide in producer and distribution channels.

The contested apparatus and instruments for conducting, accumulating electricity are similar to the opponent´s apparatus for transmitting sound in Class 9 as they can coincide in end user and distribution channels. Furthermore they are complementary.

The contested recording discs are similar to the opponent’s apparatus for reproduction of sounds or images in Class 9. The goods can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested mechanisms for coin-operated apparatus; cash registers, have some points in common with the opponent’s computer software in Class 9. The contested goods are devices that perform high-speed mathematical or logical operations or that assemble, store, correlate, or otherwise process information. They are designed to work hand in hand with software, which is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation. Therefore, the conflicting goods can be complementary. They are all related to the IT field and can be produced by the same manufacturers. Furthermore, they share the same end users, distribution channels and sales outlets. It follows that they are similar.

The contested apparatus and instruments for switching, transforming regulating or controlling electricity are similar to a low degree to the opponent's security apparatus and instruments. The opponent’s goods relate to apparatus for use in providing a security check, apparatus which uses recognition methods, involving the transmission of electrical energy and they can also include security apparatus for the protection of electric machines. Those goods can have the same commercial origin and they can also be complementary.

When comparing the contested scientific, weighing, checking (supervision), apparatus and instruments and the earlier specification apparatus, instruments and media for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting and retrieving software, information, data, code, sounds and images, which represents inter alia a comprehensive list of highly sophisticated devices with a variety of uses), it cannot be excluded that such uses covers scientific, checking and weighing apparatus. Even if scientific and weighing apparatus were not covered directly, the Opposition Division is of the view that the relevant consumer would consider that the manufacturer of the devices covered in the earlier specification “apparatus, instruments and media for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting and retrieving information, data, code, sounds and images” and that of scientific and weighing apparatus would be likely to be the same or economically linked. Moreover, the distribution channels of such devices are likely to overlap significantly. As such, the Opposition Division finds that these contested goods are similar to a low degree.

The contested fire-extinguishing apparatus are similar to a low degree to apparatus and instruments for transmitting signals in the same Class as they can coincide in producer and distribution channels.

Contested goods in Class 12

The contested vehicles; apparatus for locomotion by land, air or water have nothing in common with the opponent’s goods and services. The nature of the goods and services is different, as well as their method of use and their distribution channels. These goods and services are not in competition with one another. Questions may arise with regards to the complementarity of the goods in the sense that the opponent’s goods (for example, Class 9) may be integrated into the applicant’s goods (i.e. software specifically designed for the smooth running of on-board computers in vehicles). However, the Opposition Division finds that this link is too remote to justify a finding of similarity, as the goods at issue are usually offered by specialised companies in their corresponding specific fields. Therefore, they are not complementary. The relevant consumer will not regard the goods of the earlier trade mark and the goods of the contested trade mark as originating from the same undertaking. Consequently, the contested goods in Class 12 are considered to be dissimilar to the opponent’s goods and services in Classes 9, 35, 36, 38, 41 and 42.

Contested services in Class 38

Telecommunications are identically included in both specifications.

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 similar to various degrees are directed at the public at large and also at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high, depending on the frequency of their purchase, their particular characteristics and their price.

The signs

STORM

Earlier trade mark

Contested sign

The relevant territory is the EU.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The shared word ‘STORM’ means amongst other things “very bad weather” or “If something causes a storm, it causes an angry or excited reaction from a large number of people” (https://www.collinsdictionary.com/es/diccionario/ingles/storm).

The words ‘smart technologies’ placed only in the contested sign in smaller characters will be understood. The word ‘SMART’ is generally devoid of any distinctive character in the field of computer technology, in particular in relation to hardware and software (see by analogy 05/02/2015, T 499/13, SMARTER SCHEDULING, EU:T:2015:74 § 32-33). Therefore this element is non-distinctive for the goods in Class 9 and services in 38. Moreover, the word ‘STORM’ dominates the visual impression of the contested mark.

Visually and aurally, the signs coincide in ‘STORM’. However, they differ in the stylisation of the contested sign and the additional elements being non-distinctive and in a secondary position within the mark.

Therefore, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated to the word STORM, only differing in non-distinctive elements, the signs are conceptually highly similar.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Global assessment, other arguments and conclusion

The goods and services in Classes 9 and 38 are identical and similar to varying degrees, and the goods in Class 12 are dissimilar.

The signs are visually, aurally and conceptually similar to a high degree. The word ‘STORM’, is the entire earlier sign and entirely contained within the contested sign. In addition, this element is the most dominant and distinctive element of the contested mark.

The difference between the earlier mark and the contested sign, namely, ‘Smart technologies’, is non-distinctive for the goods and services in conflict, and placed in smaller characters, are not sufficient to counteract the significant similarity between them; therefore, there is a serious likelihood that the relevant public will confuse them and believe that they come from the same undertaking or from economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to varying degrees to those of the earlier trade mark. This conclusion furthermore stands for the contested goods which have been found to be similar to a low degree. This is because the similarity between the signs is significant enough to also lead to a likelihood of confusion in relation to the goods which only have a low degree of similarity.

The contested goods in Class 12 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 article and directed at these goods and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 examination will continue on the basis of the other ground claimed by the opponent, namely 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.

The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in 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 22/08/2014. 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 and services for which the opponent has claimed reputation.

However, for reasons of procedural economy, the evidence filed by the opponent to prove its claim will not be assessed and the Opposition Division will continue on the assumption that the earlier ‘STORM’ marks do have a reputation for all the goods and services on which the opposition is based.

The ‘link’ between the signs

As seen above, the earlier mark is assumed to have a reputation and the signs are similar to the extent that they contain the word ‘STORM’. 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.

It is now apparent that the earlier mark is assumed to have a reputation in relation to the goods and services in Classes 9, 35, 36, 38, and 42.

The Court has held in the judgement of 27/11/2008, C-252/07, Intel, EU:C:2008:655, mentioned above, that the sections of the public relevant for each of the goods and services covered by the trade marks in dispute are a factor to be taken into account when considering whether or not the existence of a link can be justified. Therefore, before examining the opponent’s claim, the Opposition Division finds it useful to note that the opposition is directed against the goods which the opposition under Article 8(1)(b) did not succeed:

Class 12: Vehicles; Apparatus for locomotion by land, air or water.

In the present case, the signs are similar and the relevant public may overlap to a certain extent.

The earlier goods and services for which reputation has been assumed of the earlier marks are:

EU trademark registration No 5 675 236

EU trademark registration No 10 518 851

The opponent’s reputed goods and services are directed at the general public as well as to the professional public, namely business customers with specific professional knowledge or expertise. As regards the contested goods in Class 12, they are directed at the general public, as well as to the professional public.

Therefore, the relevant consumers may overlap to some extent, however this does not mean that the customers are likely to establish a link between them. It will also depend on other factors, as already pointed out above.

Following the Canon criteria (29/09/1998, C 39/97, Canon, EU:C:1998:442), the Opposition Division has already considered in the first part of this decision that the opponent’s goods and services and the contested goods were dissimilar and, for that reason, likelihood of confusion pursuant to Article 8(1)(b) EUTMR was excluded. However, this does not mean that these goods and services have no connection between them. In fact, this also depends on the degree of dissimilarity between the goods and services.

It must be also noted in this regard that the Court of Justice has found that the fact that an earlier mark has a ‘huge reputation’ for certain specific types of goods or services does not necessarily imply that there is an ‘automatic link’, within the meaning of Article 8(5) EUTMR, between the conflicting marks (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 64).

The reputation that a trade mark may have must be assessed and established in relation to the goods and services for which this trade mark enjoys extensive recognition and prestige among consumers. As a result, if a reputation is recognised, this will be for certain goods and services. However, even if the relevant section of the public for the goods or services for which the conflicting marks are registered overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.

The Opposition Division finds that the gap between the goods and services for which reputation has been assumed and the contested goods is too large.

Some of the earlier goods and services pertain to the field of information technology and are intended to protect hardware, data contained therein and ultimately the rights of consumers as concerns their own personal data. The mere fact that the contested goods may use information technology in some form is not sufficient to deem that an association will be made.

The huge differences in usage between the contested goods and the opponent´s goods and services for which a reputation has been assumed make it very unlikely that the public will establish a mental link between the signs in dispute, which is essential for the application of Article 8(5) EUTMR and for unfair advantage to be taken of the distinctive character or repute of the earlier mark.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

Given that the opposition is not well founded under Article 8(5) EUTMR, it is unnecessary to examine the evidence of reputation, since the fact that no link will be made between the marks, as explained in much detail above, cannot be offset by the eventual reputation of the earlier mark.

Since the opposition is not successful on the basis of the ground of Article 8(5) EUTMR, the Opposition Division will further examine the other ground of the opposition, namely Article 8(4) EUTMR regarding a non-registered trade mark in the United Kingdom and in Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg, Ireland for the word mark ‘STORM’

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opposition is also based on an earlier non-registered trade mark, namely the non-registered mark ‘STORM in the United Kingdom for the following goods and services:

-Computer hardware and computer software; computer installations, apparatus and instruments; computer systems; computer databases; data carriers; communications and security apparatus and instruments; computer software, firmware and hardware for use with computer networks; apparatus, instruments and media for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting and retrieving publications, text, signals, software, information, data, code, sounds and images; computer hardware, middleware and software to enable the hosting and management of telecommunications services; telecommunications hosting and management systems; multiple caller processing software and systems; multiple caller management software and systems; customer relations management software and systems; interactive voice response systems; computer hardware, software and telecommunications systems for the provision of unified messaging services, audio conferencing and facsimile transmission; telecommunications systems enabling the management, running and operation of communications applications; computerised telephony systems; telecommunications systems and computer hardware and software for financial transactions, transferring funds, accounting and billing; computer software and telecommunications apparatus to enable connection to databases and the Internet; telecommunications goods; but not including keyboards, keypads, encoders for use with keyboards and keypads, data input and data output devices, visual displays, voice activated data input devices, mountings and kits and enclosures for mounting the aforesaid goods and not including parts and fittings for the aforesaid goods in Class 9.

-Advertising; business management; business administration; office functions in Class 35.

-Insurance; financial affairs; monetary affairs in Class 36.

-Telecommunications services in Class 38.

-Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software in Class 42.

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 shall 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 Opposition Division will assume that the opponent has proved prior use in the course of trade of more than mere local significance in the United Kingdom for all the goods and services on which it is based.

In the United Kingdom non-registered trade marks, trade names, company names, business names and unfair competition rights used in the course of trade are protected by the law of passing-off. The relevant national law as identified by the opponent is Section 5(4)(a) of the Trade Marks Act 1994 (as amended). It states that:

“A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented –

(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, or

(b) […..]

A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of “an earlier right” in relation to the trade mark.”

As stated by the opponent (it’s submissions of 31/07/2015), in order for a passing-off claim to succeed the following cumulative test must be satisfied (as outlined in Reckitt & Colman Products Ltd v. Borden Inc. [1990] R.P.C. 341):

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing/priority (if applicable) date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent. In other words, the public would be likely to believe that goods put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

It has been assumed that the opponent has used its earlier mark to more than local significance in the UK. It must therefore follow that the opponent has the requisite protectable goodwill. Therefore, the first condition is satisfied.

A misrepresentation (or likelihood thereof) takes place when the public believes that the contested goods and services offered are those of the opponent. In the present case, the Opposition Division does not consider that any misrepresentation (or likelihood thereof) will take place between the contested dissimilar goods in Class 12 and the opponent’s goods and services as already compared above. For similar reasons to those set out when analysing whether there will be likelihood of confusion on the part of the relevant consumer, the Opposition Division does not consider it plausible that use of the contested sign ‘STORM’ in relation to all the contested dissimilar goods, detailed above, will amount to a misrepresentation leading or likely to lead the public to believe that the services offered are those of the opponent. The respective areas of commercial activity are simply too far apart, as explained when considering the comparison of goods and services under Article 8(1)(b) EUTMR above.

Consequently, as there will be no misrepresentation, one of the requirements of passing off is not fulfilled and, as a result, the opposition must be rejected as unfounded with regard to passing-off in the United Kingdom and under Article 8(4) EUTMR.

The opposition also relies upon the non-registered trade mark ‘STORM’ in Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg, Ireland for the following goods and services:

-Advertising; business management; business administration; office functions in Class 35.

-Insurance; financial affairs; monetary affairs in Class 36.

-Telecommunications services in Class 38.

-Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software in Class 42.

The right under the applicable law

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 the EUIPO 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 any information on the legal protection granted to the type of trade sign invoked by the opponent, namely the non-registered sign used Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg, Ireland. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

Therefore, the opposition is 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

Mark KING

Birgit FILTENBORG

Francesca CANGERI

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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