OPPOSITION No B 2 638 735
Dainese S.p.A., Via dell’Artigianato, 35, 36060 Molvena (Vicenza), Italy (opponent), represented by Società Italiana Brevetti S.p.A., Stradone San Fermo, 21/B, 37121 Verona, Italy (professional representative)
a g a i n s t
Shenzhen Redfox Intelligent Technology Co. Ltd., No. 522, Block 5E, Software Industry Base, Nanshan District, Shenzhen, the People’s Republic of China (applicant), represented by Becker Kurig Straus, Bavariastr. 7, 80336 Munich, Germany (professional representative).
On 02/03/2017, the Opposition Division takes the following
1. Opposition No B 2 638 735 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 628 051, namely goods in Classes 7, 9, 12 and 28. The opposition is based on European Union trade mark registration No 504 159 and international trade mark registration No 896 957 designating the European Union. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.
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 its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
If the opponent has submitted a certificate of registration but the registration is due to expire before the expiry of the time limit for substantiation, it must file a renewal certificate or equivalent document in order to prove that the term of protection of the trade mark extends beyond the time limit or an extension thereof that has been allowed for it to substantiate its opposition. It is the date on which the registration would expire that matters, not the possibility of renewing the mark within the six-month grace period under the Paris Convention.
It should also be noted that Rule 19(2)(a) EUTMIR specifically exempts only European Union trade marks from the obligation to submit evidence of registration. An analogy cannot be drawn with international trade marks designating the European Union because the registration authority for international trade marks is the World Intellectual Property Organization, which is the original source of information about the existence, validity and scope of protection of international trade marks. International trade mark registrations are not in the register of EU trade marks kept by EUIPO in accordance with Article 87 EUTMR.
This approach was confirmed by the General Court when it held that, since EUIPO is not responsible for managing international registrations and is not the administration by which international trade marks are registered, for the purposes of Rule 19(2)(a)(ii) EUTMIR, an extract from the EUIPO database regarding an international trade mark designating the EU does not constitute proof of the existence, validity and scope of protection of the international trade mark (26/11/2014, T-240/13, Alifoods, EU:T:2014:994, § 28).
In the present case, the evidence filed by the opponent together with the notice of opposition consists of an extract from WIPO’s ROMARIN database detailing the particulars of international trade mark registration No 896 957 designating the European Union for the figurative mark .
The opponent did not submit any additional evidence concerning the substantiation of the abovementioned earlier trade mark within the time limit given by the Office, which expired on 20/07/2016.
The evidence submitted is not sufficient to substantiate the opponent’s earlier trade mark, because it indicates that the expiry date of the registration was 01/03/2016 and does not provide any information about its renewal.
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 its earlier mark or earlier right, as well as its 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 international trade mark registration No 896 957 designating the European Union.
Consequently, the Opposition Division will examine the opposition in relation to the opponent’s European Union trade mark registration No 504 159.
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 signs
Earlier trade mark
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).
Both marks are purely figurative marks.
The earlier mark consists of a black triangular element containing two small white triangles. The top edge of this element is made up of two short straight lines with a curved line between them.
The Opposition Division does not concur with the opponent’s assertion that the earlier mark will be perceived as a face with two ears, two eyes and a rounded head. It is considered highly unlikely that the public would analyse the details of the earlier mark to such an extent that they would perceive in it such non-obvious shapes and concepts. It should be noted that the opponent’s interpretation and intention regarding the perception of its own mark is not decisive, because the comparison of the signs is based on the perception of the signs by the relevant public.
The contested mark consists of a central white element with a black line above it and two black triangles inside it; as a whole, these elements will be recognised – by at least a part of the public – as the stylised head of an animal, such as a fox, made up of geometrical shapes. Below these elements, there is a black element composed of two long black horizontal devices extending from the animal’s head, with two short thin black lines above them.
The marks have no elements that could be considered clearly more dominant (visually eye-catching) or distinctive than other elements.
Visually, although both signs contain various triangular shapes and curved lines, this is not sufficient for a finding of similarity between them. This is because they differ in many significant aspects, such as their shapes, contours, angles and reversed colour patterns (dark/light). Furthermore, the earlier mark contains only one element, whereas the contested sign contains a central device and the additional figurative components described above. Consequently, the signs produce different visual impressions.
The opponent argues that the signs are visually similar, because both marks will be perceived as a face with a similar shape. As indicated above, the Opposition Division considers that the earlier mark will be perceived by the public in the relevant territory as an abstract geometrical shape. Even if, following a significant mental effort, consumers might perceive the lines, angles and triangles of the earlier mark as a highly stylised face, this would not support the opponent’s arguments, as the depiction of the earlier mark is very different from the depiction of the contested sign, the shapes, angles, contours and colour patterns of which are different.
Considering all these particularities, it is concluded that the signs are not visually similar.
Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.
Conceptually, at least a part of the relevant public will associate the contested mark with an animal, such as a fox, while the earlier mark does not have any meaning. Since one of the signs will be perceived as meaningless, the signs are not conceptually similar.
Furthermore, both signs will be perceived by a part of the public as fanciful abstract shapes and, therefore, as meaningless. For this part of the public, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
The opponent claims that the signs are conceptually similar because they ‘look like a triangular shaped face’. Although, as indicated above, the Opposition Division does not agree with this interpretation of the signs, it must be noted that if the earlier mark were associated with a face, which is highly unlikely, this would not lead to a finding of conceptual similarity between the marks, because the contested mark would be perceived as a reference to an animal, such as a fox, and this concept would not be perceived in the earlier mark.
As the signs coincide only in irrelevant aspects, they are dissimilar.
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are 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 signs 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.
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 shall 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.
The identity or similarity of the signs is also a condition for the application of Article 8(5) EUTMR. Since the signs are dissimilar, one of the necessary requirements of Article 8(5) EUTMR is not met, and the opposition must be rejected as not well founded on this ground.
Since the opposition fails on all counts, it must be rejected in its entirety.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.