OPPOSITION No B 2 474 644

Derek Banner, Axel Heides Gade 7b, 1.th, 2300 Copenhagen S, Denmark (opponent)

a g a i n s t

Meter Television AB, Box 27837, 115 93 Stockholm, Sweden (applicant), represented by Kanter Advokatbyrå KB, Box 1435, 111 84 Stockholm, Sweden (professional representative).

On 02/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 474 644 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 361 811 for the word mark ‘LUXURY TRAP’, namely against all the goods and services in Classes 9, 35, 36, 41 and 45. The opposition is based on the European Union wide well-known mark ‘LUXURY TRAP’. The opponent invoked Article 8(1)(a) and (b) in conjunction with Article 8(2)(c) EUTMR.

EARLIER WELL-KNOWN MARK – ARTICLE 8(1)(a) and (b)EUTMR IN CONJUNCTION WITH ARTICLE 8(2)(c)EUTMR

The opponent states that its word mark ‘LUXURY TRAP’ is well known in the European Union in the sense of Article 6bis of the Paris Convention for the goods and services in Classes 9, 35, 36 and 41.

According to Article 8(2)(c) CTMR, for the purposes of Article 8(1) CTMR, ‘earlier trade marks’ means:

trade marks which, on the date of application for registration of the Community trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the Community trade mark, are well known in a Member State in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention (emphasis added).

Article 8(2)(c) EUTMR in general only defines the earlier trade mark for the purposes of paragraph 1 and, therefore, does not provide an independent relative ground for refusal. Accordingly, the grounds for refusal and opposition are those provided by Article 8(1) EUTMR.

In order for Article 8(1)(a) or (b) EUTMR in conjunction with Article 8(2)(c) EUTMR to be applicable, the following has to be established:

a) the earlier mark was well known in the relevant territory on the date when the contested EUTM application was filed and

b) because of identity with or similarity of the contested mark to the earlier well known mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the relevant territory.

According to Rule 19(2)(b) EUTMIR, if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR the opposing party must provide evidence showing that this mark is well-known in the relevant territory. In order for Article 8(2)(c) EUTMR to be applied, among other prerequisites, it has to be determined whether the earlier mark was well known at the time of filing of the contested EUTM application. In this respect, several factors have to be taken into account. In particular, the following factors are relevant: the degree of knowledge or recognition of the mark in the relevant sector of the public; the duration, extent and geographical area of the use or promotion of the mark; and the value associated with the mark. Other indications could also be relevant, such as the duration and geographical area of any registration, any applications for registration of the mark, to the extent that they reflect use or recognition of the mark, and/or the record of successful enforcement of rights in the mark, particularly the extent to which the mark was recognised as well known by the competent authorities.

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 opponent submitted the following evidence:

• Several print-outs with regard to a TV programme description with the international title ‘LUXURY TRAP’. Some of the printouts show the copyright symbol ‘©2005’.

• Copy of a production agreement of 1/12/2006.

• Copy of a judgment of the Stockholm district Court (claimant: opponent) of 03/03/2014.

The Opposition Division takes the view that it does not prove that the opponent’s earlier trade mark is well known in the European Union. The documents on record do not contain any element concerning the market share held by the trade mark and they include no independent proof of the intensity and duration of its use and the size of the investments made by the undertaking in promoting it for the goods and services in question. The only information provided by the opponent is that there was a TV project with the title ‘LUXURY TRAP‘ in 2005. However, it is not clear from the evidence submitted whether the TV programme was known at all to the relevant public.

According to the cited Stockholm District Court judgment the opponent’s claim was dismissed. Furthermore, the case is about trade secrets and not about infringement of trade marks. As regards the opponent refers in its further submission of 22/11/2015 that the case dealt also with trade mark infringement the Opposition division disputes that argument. Even it was also a case of trade mark infringement the opponent did not submit any further evidence of a registered or unregistered trade mark, especially on the intensity of its use. Well known marks which have not been registered may also be protected under Article 8(4) EUTMR. However, the opponent did not invoke Article 8(4) EUTMR.

Consequently, as the opponent failed to show that its earlier trade mark was well known among the relevant public at the critical date, this ground fails and the opposition must be rejected as far as based on the claim of an earlier well-known mark within the meaning of Article 8(2)(c) EUTMR. Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(a) and/or (b) EUTMR in conjunction with Article 8(2)(c) EUTMR with regard to the European Union.

BAD FAITH

The opponent stated that the applicant filed the contested trade mark in bad faith which is also its main line of argument. However, this cannot be a basis for the opposition. Article 41 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

FINAL CONCLUSION

Considering all the above, the opposition is not well founded under any of the grounds of opposition raised by the opponent. It follows that the opposition must be rejected in its entirety.

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

Peter QUAY

Martin EBERL

Andrea VALISA

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.