OPPOSITION No B 2 473 695

Efen GmbH, Schlangenbader Str. 40, 5344 Eltville, Germany (opponent), represented by WSL Patentanwälte, Kaiser-Friedrich-Ring 98, 65185 Wiesbaden, Germany (professional representative)

a g a i n s t

Steve Krack, 30 Grand Rue, 1660 Luxembourg, Luxembourg (applicant), represented by Lecomte & Partners SARL, 76-78 rue de Merl, 2146 Luxembourg, Luxembourg (professional representative).

On 17/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 473 695 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 of Community trade mark application No 13 396 221 (those in Classes 9 and 11). The opposition is based on, inter alia, international registration No 13 396 221 designating the European Union, which protects goods in Class 9. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 international registration No 13 396 221 designating the European Union.

1. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The opponent argues that the earlier mark depicts a stylised letter–number combination, namely ‘E3’, turned 90 degrees clockwise. The fact remains, however, that the opponent chose to register its mark in a specific orientation and, furthermore, when assessing the identity or similarity of signs, they have to be compared in the form in which they are protected, that is, in the form in which they are registered or applied for (judgment of 09/04/2014, T‑623/11, ‘Milanówek cream fudge’). At first sight, the upper element of the earlier mark resembles a stylised letter ‘m’, whereas the lower element may be identified as the letter combination ‘UN’ or ‘UV’.

In its application, the applicant chose to describe the verbal elements of the contested sign as ‘E3’; however, this fact does not automatically imply that the relevant public will perceive in a clear and indubitable manner the letter ‘E’ and the numeral ‘3’ in the contested sign (see judgment of 24/01/2012, T‑593/10, ‘B’, paragraph 28). In the case at issue, the Opposition Division considers that the contested sign will be perceived either as two letters ‘E’ depicted in a fairly standard typeface, with the letter on the right slightly smaller than the one on the left and placed above it in a reversed orientation, or as ‘E cubed’ (E raised to the power of three).

The signs are visually, aurally and conceptually dissimilar, as they have no element in common at any of the three levels of comparison. Visually, as explained above, the upper element of the earlier mark will be seen as a letter ‘m’, whereas the lower element will be seen as the letter combination ‘UN’ or ‘UV’, and the contested sign will be perceived either as two letters ‘E’ of different sizes, with one letter placed above and to the right of the other, or as E cubed.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier sign will be pronounced in the combination ‘m un’ or ‘m vn’, while the contested sign will be pronounced as two letters ‘E’ or as ‘E cubed’.

Conceptually, the signs are dissimilar because the public in the relevant territory will perceive the earlier mark as two different letters of the Latin alphabet and the contested sign as two letters, ‘E’ or ‘E cubed’.

2. Conclusion

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

The other earlier right invoked by the opponent (German registration No 30 2009 021 481) protects exactly the same sign. Consequently, the outcome of this decision would not be different vis-à-vis this other earlier right and, therefore, this other right does not need to be evaluated.

COSTS

According to Article 85(1) CTMR, 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 (7)(d)(ii) CTMIR, 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

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Solveiga BIEZA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.