TOYEUREKA | Decision 2459181

OPPOSITION No B 2 459 181

Damerik, S.L., Calle Juli Garreta, 20 17002, Girona, Spain (opponent), represented by Ingenias, Av. Diagonal, 421, 2º 08008, Barcelona, Spain (professional representative)

a g a i n s t

Vorola Financial Ltd., 33 Porter Road P.O. Box 3169, PMB 103 Road Town, Tortola, British Virgin Islands (holder), represented by J.M. Toro S.L., Viriato 56 – 1º izda, 28010, Madrid, Spain (professional representative).

On 21/06/2017, the Opposition Division takes the following


1.        Opposition No B 2 459 181 is rejected in its entirety.

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


The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 204 348 for the figurative mark Magnify, namely against all the goods in Class 28. The opposition is based on, inter alia, international registration No 1 173 922 designating the European Union for the figurative mark  and Spanish trade mark registration No 3 065 618.

The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark regarding the claim of reputation (Article 8(5) EUTMR)

Rule 15(2)(c) EUTMIR stipulates that the notice of opposition must contain an indication of the grounds on which the opposition is based.

In the present case, the opponent stated in the notice of opposition that the opposition was based on Article 8(1)(b) EUTMR in respect of the earlier rights.

The opposition period ended on 02/03/2015.

However, on 05/08/2015 the opponent stated that ‘the opponent trademarks are to be considered as well-known and therefore they enjoy of a greater degree of reputation’. Therefore, the opposition should also have been based on Article 8(5) EUTMR according to this claim.

The opponent cannot extend the basis of the opposition after the expiry of the opposition period. Consequently, the Office finds that the opposition was duly entered only as far as it is based on Article 8(1)(b) EUTMR.

Substantiation of international registration No 1 173 922 designating the European Union

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

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered – Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards earlier international trade mark registration No 1 173 922 on which, inter alia, the opposition is based.

On 31/03/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 05/08/2015.

The opponent did not submit any evidence concerning the substantiation of this earlier international registration.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier international mark. The opposition will proceed for only the remaining earlier marks on which the opposition is based.


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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 3 065 618.

  1. The goods and services

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

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives (glues) for stationery or household purposes; artists’ materials; brushes; typewriters and office requisites (except furniture; instructional and teaching material (except apparatus);plastic materials for packaging (not included in other classes; printed characters; printing blocks

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 35: Retail services and retailing in shops, and via telecommunications networks stationery, printed matter, children’s clothing, games, toys and childcare products; advisory services and related business consulting franchises.

The contested goods are the following:

Class 28: Fairground ride apparatus.

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.

Fairground ride apparatus refers to mechanical devices or structures that move people to create enjoyment and that are usually found at amusement parks, travelling carnivals and travelling funfairs. Their natures and methods of use are distinct from those of the opponent’s goods and services in Classes 16, 28 and 35. Furthermore, they are not in competition or complementary and do not usually have the same manufacturers or distribution channels. They are, therefore, found to be dissimilar.

  1. Conclusion

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

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

The opposition is also based on the following earlier marks:

earlier EU marks No 6 265 599 and No 3 864 221, both for the figurative mark  covering games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees in Class 28, commercial retailing of children’s clothing, accessories in Class 35 and paper, cardboard and goods made from these materials, not included in other classes; bookbinding material; photographs; stationery; artists’ materials in Class 16, and Portuguese mark No 489 861 for the word mark ‘EUREKAKIDS’ for games, toys; gymnastics articles and not included in other sports classes; decorations for Christmas trees in Class 28.

These earlier rights cover the same or a narrower scope of goods and services, so the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.


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

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

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

The Opposition Division




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

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

Leave Comment