Sky Greens | Decision 2773474
Date Published: Oct 22, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 773 474
Mat Investment Holding S.L., C/ Garbi, 3 Pol. Ind. "Can Volart", 08150 Parets del
Valles, Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415
5° 1ª, 08009 Barcelona, Spain (professional representative)
a g a i n s t
Sky Urban IP Pte. Ltd., 42 Kallang Place, Singapore 339170, Singapore (holder),
represented by Landmark B.V., Drentsestraat 4, 3812 EH Amersfoort, The
Netherlands (professional representative).
On 20/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 773 474 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 international
registration designating the European Union No 1 292 958 for the figurative mark
, namely against some of the goods in Class 21. The opposition is based
on Spanish trade mark registration No 2 922 066 for the figurative mark
in Class 9. The opponent invoked Article 8(1)(b) EUTMR.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 773 474 page: 2 of 3
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.
a) The goods
The goods on which the opposition is based are the following:
Class 9: Apparatus and instruments for the control, emission, transmission,
reception, registration of data via radio and peripherals, for automatic
watering systems.
The contested goods are the following:
Class 21: Watering devices.
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.
The contested watering devices are gardening articles that are used for the purposes
of watering plants and flowers in the garden, such as watering cans or syringes for
watering flowers and plants, all manually operated.
The earlier mark’s goods are electric devices, i.e. whose operation is based on
electric and/or electronic components, as included in Class 9, intended for the
control, emission, transmission, reception, registration of data via radio and
peripherals, for automatic watering systems such as water level sensors, buzzers,
LEDs, relay modules, water pumps, LCD displays, etc.
Contrary to the opponent’s assertions, the fact that the earlier mark’s goods are used
for, inter alia, watering systems, is not sufficient to render the goods under
comparison similar. These goods do not show any similarity in terms of their nature,
usual origin, manufacturers, or method of use. Furthermore, the goods compared are
neither in competition nor complementary to one another. Therefore, they are
dissimilar.
b) 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.
Decision on Opposition No B 2 773 474 page: 3 of 3
COSTS
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Chantal VAN RIEL Klaudia MISZTAL Lucinda CARNEY
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.