OPPOSITION No B 2 737 933
Unity AG, Lindberghring 1, 33142 Büren, Germany (opponent), represented by 24IP Law Group Sonnenberg Fortmann, Herzogspitalstr. 10 a, 80331 München, Germany (professional representative)
a g a i n s t
Feng Sun, 201,10 Building, Guiyuan Village, Wuzhong District Economic Development Zone, Suzhou, The People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).
On 08/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 737 933 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 373 871 , namely all the goods in Class 9. The opposition is based on European Union trade mark registration No 10 839 793 ‘Unity’ (word mark). The opponent invoked Article 8(1)(b) 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.
Preliminary remark
According to Article 41 EUTMR, a notice of opposition may be submitted within three months following the publication of an EUTM application.
In the notice of opposition of 20/07/2016, the opponent indicated that the opposition was based on some of the goods, namely the goods in Class 9.
However, in its submissions of 09/12/2016, the opponent referred to all the goods and services covered by the earlier mark in Classes 9, 16, 35 and 42.
By indicating the goods and services on which the opposition is based in accordance with Rule 15(2)(f) EUTMIR, the opponent determines the actual scope of the opposition, which may not subsequently be extended.
Consequently, the Office finds that the opposition was duly entered as being based on some of the goods covered by the earlier mark, namely the goods in Class 9.
- The goods
The goods on which the opposition is based are the following:
Class 9: Compact discs (read-only memory); compact discs (audio, video); computer operating programs (recorded); computer programs, recorded; computer programs (downloadable); computer software (recorded); floppy disks; electronic publications (downloadable)
The contested goods are the following:
Class 9: Radiological apparatus for industrial purposes; sound locating instruments; monitoring apparatus, electric; lasers, not for medical purposes; inductors [electricity]; semi-conductors; optical goods; optical apparatus and instruments; optical condensers
Contested goods in Class 9
Radiological apparatus for industrial purposes is apparatus used in the science dealing with X-rays and other high-energy forms of radiation.
Inductors are passive two-terminal electrical components that store electrical energy in a magnetic field when electric current is flowing through it.
Lasers are devices that emit light through a process of optical amplification based on the stimulated emission of electromagnetic radiation.
Semi-conductors are solid substances that have a conductivity that is between that of an insulator and that of most metals, either due to the addition of an impurity or because of temperature effects. Devices made of semi-conductors, notably silicon, are essential components of most electronic circuits.
Optical instruments either process light waves to enhance an image for viewing or analyse light waves (or photons) to determine one of a number of characteristic properties.
The opponent’s goods are computer-related goods, such as computer programs and compact discs, while the contested goods are different kinds of apparatus, such as optical apparatus and monitoring apparatus. Although software is sometimes necessary for the functioning of this kind of apparatus, this is not sufficient for a finding of similarity between these two sets of goods. They have different natures, intended purposes and methods of use. Furthermore, their producers and distribution channels are also different. Therefore, they are dissimilar.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
|
Dorothee SCHLIEPHAKE |
Patricia LOPEZ FERNANDEZ DE CORRES |
Marianna KONDAS |
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.