OPPOSITION No B 2 478 942

Nebra Ltd, 22 Church Road, TN1 1JP, Tunbridge Wells, United Kingdom (opponent), represented by Trade Mark Wizards Limited, Bentinck House 3-8 Bolsover Street, W1W 6AB, Fitzrovia, London, United Kingdom (professional representative)

a g a i n s t

Power Integrations Inc., 5245 Hellyer Avenue, 95138 San Jose, United States (applicant) represented by A.A. Thornton & Co. 10 Old Bailey, EC4M 7NG, London, United Kingdom (professional representative).

On 20/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 478 942 is upheld for all the contested goods and services.

2. European Union trade mark application No 13 466 719 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 466 719 for the word mark ‘PI’. The opposition is based on non-registered trade mark ‘PI SUPLY’ used in the course of trade in the United Kingdom. The opponent invoked Article 8(4) EUTMR.

On 27/02/2017, the Opposition Division rendered a decision that resulted in the rejection of the opposition given the lack of sufficient information on the legal protected granted to the UK unregistered mark under the common law tort of passing off.

The decision was appealed and the Board of Appeal decided in case R 859/2017-5 on 17/04/2018. The Board decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the evidence submitted to prove the legal protection sufficed and it also accepted belated evidence presented in the appeal.

The Board decided a new decision should be taken, ‘taking in consideration all the arguments presented by the parties during the course of the opposition and appeal proceedings, as well as all the relevant factors for the material assessment required, including complying with the obligations of the Office to acquaint itself with national law in accordance with the case-law cited in paragraph 19 and undertaking a complete and full assessment of the admissibility of the evidence submitted and in doing so adhering to all applicable legal doctrine and to the duty to state reasons as defined under European Union law’ [sic 25].

Preliminary Comments

1. Basis and scope of the opposition

Initially, in the notice of opposition, the opponent listed a range of activities that the opponent identified as falling within Classes 9, 41 and 42. However, in a subsequent communication dated 31/07/2015, the opponent submitted that by the relevant date, it enjoyed goodwill in relation to the manufacturing, designing and retailing of computer software, computer hardware and other Raspberry Pi related goods, electronic components and computer accessories. In the same submissions the opponent also states that it provides the same services in Classes 41 and 42 as the applicant.

In its response, the applicant considered that these statements both limit the basis of the opposition, whilst some of the activities, (manufacturing and retailing) for which goodwill was claimed, were beyond the scope of the original basis of the opposition. The applicant raised doubts on the admissibility.

The opponent, in its final submissions, clarifies that it no longer wishes to rely on all the services in Classes 41 and 42 but only on the goods and services mentioned in its communication of 31/07/2015.

The Opposition Division takes note of the above but at the same time, also concurs with the applicant that the manufacturing and retailing services were never mentioned in the original notice of opposition nor in the opposition period. Given that these services affect the scope of the opposition, effectively extending it, they cannot be considered.

Therefore the goods and services on which the opposition is based are:

Computer software; computer hardware; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; power supplies; electronic components; semiconductors; transistors; network boards; distribution boards; pc boards; digital boards; memory boards; circuit boards; electronic copy boards; electrical circuit boards; connection boards [electric]; memo boards [electronic]; panel boards [electricity]; flexible circuit boards; camera boards; computer circuit boards; printed circuit boards; electrical switch boards; computer interface boards; add-on circuit boards; computer add-on boards; system boards (mother cards); printed wiring boards; integrated circuit boards; distribution panel boards [electricity]; test adapters for testing printed circuit boards; add-on circuit boards for connecting computers to networking software; circuit distributors; circuit fuses; circuit testers; circuit closers; circuit breakers; circuit cards; decision circuits; focusing circuits; analogue circuits; logic circuits; hybrid circuits; printed circuits; electrical circuit testers; integrated circuit chips; integrated circuit modules; electronic circuit cards; electrical circuit breakers; integrated circuit memories; electric circuit interrupters; hybrid integrated circuits; printed electric circuits; computer network switches; high frequency switches; electric current switches; electronic touch sensitive switches; rotary cam limit switches; push button switches (electrical -); push leaf switches (electrical -); temperature control apparatus [electric switches]; change-over switches [for telecommunication apparatus]; temperature control apparatus [electric switches] for machines; temperature control apparatus [electric switches] for vehicles; battery adapters; power adapters; ethernet adapters; electric plug adapters; electric extension leads and extension outlet sockets; electric conductor wires and cables; electric couplings; electric connections; electric switchboxes; electric fuses; electric sensors; electric contacts; electric cells; electric batteries; electric convertors; electric rectifiers; electric plugs; electric oscillators; electric buzzers; electric cords; electric wire; electrical sockets; electrical inductors; electrical terminators; electrical armatures; electrical capacitors; electrical receivers; electrical coils; electric leads; electrical ducts; electrical meters; electrical conduits; electrical amplifiers; electric switching apparatus; connection plugs (electric -); electric current rectifiers; electric circuit interrupters; metallic cables [electric]; switch panels [electric]; heat resistant electric cables; plastic covered electric wires; data storage devices; memory storage devices; electricity storage apparatus; junction boxes [electricity]; branch boxes [electricity]; connection boxes [electricity]; wire connectors [electricity]; computer network adapters; flash card adapters; test adapters for testing printed circuit boards; high-frequency switching power supplies; wireless computer peripherals.

Designing of the aforementioned goods.

2. Applicant’s goodwill in the contested mark

The applicant submitted abundant documents to prove use of its mark, the contested mark, in the UK, as well as the goodwill gained. The applicant also submitted such evidence to support its claims that use of the earlier mark is not earlier and in fact both marks have been used in a concurrent manner.

Firstly, the Opposition Division notes that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Secondly, whether or not the earlier mark is earlier, will be assessed below when evaluating the evidence to prove use of its mark in the course of trade of more than mere local significance.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested trade mark was filed on 17/11/2014. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to that date.

The evidence must also show that the opponent’s sign has been used in the course of trade for the activities listed above.

On 31/07/2018, the opponent filed the following evidence:

 A witness statement by Mr Aaron Shaw (dated 31/07/2015), Director of the opponent company at that time. The statement sets out the history of Pi Supply which, drawing from the success of a sister brand (‘Raspberry Pi’) was launched in 2013 for ‘add ons’ to the original ‘Raspberry Pi’ computer. Consequently Pi Supply expanded its activities and began trading as a manufacturer and retailer of electronic products, both for themselves as well as third parties. Essentially, their goods can be connected to a computer to teach users about programming and other aspects of computer learning. One of the first successful products was designed to enable users to turn on/off their Raspberry PI without plugging and unplugging.

The statement refers to its online shop which purportedly has 10 000 hits/month and 15% of which comes from the UK. Reference is made to the kind of products sold and also the opponent’s role as a distributor for third parties. The statement also refers to 400 orders/month made through its website from approximately 5000 different customers, 40% from the UK. Orders range from 25GBP to 30 000GBP. Offline, there are 20 sales/month but for higher amounts. Turnover in 2014 was around 267 000 GBP. Reference is also made to a newsletter that the opponent makes available to 7 700 subscribers so as to better promote its goods and services. Moreover, information concerning social media is also included, such as the fact that by 17/11/2004 there were 840 followers on Twitter with 4 accounts though at 31/07/2015 this has risen to 2700; 20 likes on Facebook which has now increased to 1700 likes.

The statement also refers to websites which advertise the opponent’s goods and services and provide tutorials on how to use their goods.

The opponent also refers to the specialist nature of its products which has also led to publicity in various magazines and the opponent details these. Further, the opponent has spent around 15 000 GBP on advertising and details are given of such promotion.

The following exhibits are also referred to:

 Exhibit AS1: Copies of the opponent’s newsletter which shows components, parts and fittings for a computer including motherboards.

 Exhibit AS2: Website for ‘The Magpi.com’ and features the opponent’s mark and also includes the opponent as one of the retailers of the Raspberry Pi product.

 Exhibit AS3: Printouts which according to the opponent ‘demonstrate Pi Supply’s outreach and community engagement efforts’.

 Exhibit AS4: Opponent’s distributor websites.

 Exhibit AS5: Website of a company, ‘CPC’, which according to the opponent is a leading business to business distributer of electrical products. The actual website shows a variety of different switches but none concerning the opponent’s goods or mark.

 Exhibit AS6: Selection of (16) invoices, showing the mark , 5 invoices are dated in 2015, 9 from 2014 and 1 from 2013 showing sales of USB power supply, SD card, HDMU cable, short crust case, assembly and SD card imaging, switches of all kinds, sensors, amplifiers, camera, photo cell, crusts, fish dish, touch screen, adapters, kits, motion bits, wireless expansion pack, bend bit, microphone bit, number bit, slide dimmer bit, remote trigger bit, USB power bit, customised packages. 4 invoices are for sales between 180-500 GBP, 2 invoices for 700-800 GBP, 4 invoices from 1 000-2 500 with the remaining invoices of 6 600, 9 000, 9 415, 10 080 GBP respectively. Further, the invoices cover different geographical areas in the UK (London, East Sussex, West Sussex, Sheffield, Dorset, Preston, Hartfield, Milton Keynes), and there are invoices for the United States of America, Spain, France and the Netherlands.

 Exhibit AS7-8: Photos of products (switches, pi crust which appears to be a kind of circuit board, as opposed to ‘short crust case’ which is a casing for computers, fish dish gert, switches (both of which are kinds of circuit boards, papyrus bottom (software), papyrus plugs, and stationary bearing the mark in question.

 Exhibit AS9-10: Social media pages concerning the opponent and websites with instructions and tutorials concerning the opponent’s activities. Goods include lighting devices, circuit boards, display HATs.

 Exhibit AS11: Print outs concerning the opponent’s Kickstarter campaigns.

 Exhibit AS12: Selection of articles referring to the opponent.

 Exhibit AS13: Copies of advertisements: Pi weekly, showing the mark (2015)

 Exhibit AS14: Customer opinions on the opponent products. Positive opinions on power supply products cases, kits, PapiRus software.

On 11/04/2016, in response to the applicant’s criticism of the evidence, the opponent submitted further evidence consisting of:

 A second witness statement from Mr Shaw which refers to exhibits previously presented and clarifies those exhibits.

 Further exhibits mainly relating to extracts from the opponent’s and related websites showing products (those already referred to in the previous listing) with the earlier right featured.

 Invoices dated from 05/06/2013-12/11/2014 (approximately 30 for 2014 and 5 for 2013) for amounts ranging between 80 GBP and 1842 for crusts, switches, USB WiFi Nano dangle, cord, power supply, mounts, cables, monitor, touch screen, HDMI cable, assembly and SD Card imaging, to addresses throughout the UK (such as in Suffolk, Derby, Sheffield) as well as an invoice to Germany.

 Purchase order from ‘cpc’ for switches, boards and case.

 Some Invoices from ‘raam audio’ but with no reference to the opponent’s mark.

Assessment of the evidence (first batch)

The applicant has commented on the evidence, finding it rather deficient, however it has undertaken a rather piecemeal approach. In this regard the Opposition Division undertakes a global assessment whereby all pieces of evidence are evaluated in combination with one another. Moreover, evidence is not simply dismissed if it falls outside the relevant period since it may offer indirect indications or indeed may help clarify other pieces of evidence. The arguments of the opponent will be tackled in the assessment where relevant.

As far as the probative value of the witness statement is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case, including the evidence which originate from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The exhibits submitted largely support the claims made in the statement. Firstly, when looking at ‘more than mere local significance’ the sign must have a real presence on its relevant market, must actually be used in a sufficiently significant manner in the course of trade and must be used in a substantial part of that territory (more than a town or a province) (29/03/2011, C-96/09 P, ‘Bud’, § 158 and 24/03/2009, T-318/06 to T-321/06, ‘General Optica’, § 34).

The invoices, advertising, articles, customer opinions as well as the social media exhibits all prove that the mark had a real presence on the market, generating business. Indeed, the invoices cover the length and breadth of the UK and even show that the goods were exported abroad. Further, the invoices are only examples of sales, yet as can be seen, the proof spans 2013-2015 and allows the figures in the witness statement to be confirmed since the sales from just 16 invoices show considerable amounts in some cases. The applicant’s comments that certain invoices should be disregarded as they have been issued to companies outside the relevant territory do not hold true. Firstly, they are very minimal and they do not cancel out the invoices that do relate to the UK. Secondly, the invoices are from the UK to other countries and including shipping charges and the evidence also indicates that these sales were made on the basis of business generated in the UK and the goodwill therein. Consequently, these invoices cannot simply be dismissed.

Indeed, as previously mentioned these invoices are examples and support the claims made in the witness statement. Further, unlike the situation described by the applicant, the opponent does not need to provide invoices for the entire period up until the relevant date. The opponent has to prove it has a place on the market and that it generates business for the mark and the relevant goods and indeed this can be demonstrated in various ways and there is no obligation on behalf of the opponent to submit full financial details. Further, the fact that some of the invoices (5 in total) are after the filing of the contested mark does not automatically disqualify such evidence, for the same reasons as previously given, as well as the fact that they also prove ongoing use and continued existence of the right.

The applicant finds the evidence trivial and insufficient to support a claim of passing off. The applicant refers to the opponent’s’ claims regarding the popularity of the Raspberry Pi product and the fact that the opponent’s right and goods at issue are related to that product and its success. From this information, the applicant deduces that ‘there would be considerable potential for a business to exploit the popularity of the Raspberry Pi single-board computer,’ and thus concludes that in this context, the opponent’s sales and turnover figures are very poor.

In this regard the Opposition Division does not concur. Firstly, proving more than mere local use is not proving economic success but rather that the mark is used in the context of commercial activity with a view to economic advantage. Secondly, a more than mere local use is a European standard that is applied in the light of Union law and has to be differentiated from goodwill, which will be analysed subsequently. Thirdly, to reiterate, rights falling under Article 8(4) EUTMR is reserved for signs which actually have a real presence on their relevant market (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157). Finally, the notion of ‘use in the course of trade’ in accordance with Article 8(4) EUTMR is not the same as ‘genuine use’ in accordance with Article 47(2) and (3) EUTMR (30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 24-27). The aims and conditions connected with proof of genuine use of registered European Union or national trade marks are different from those relating to proof of use in the course of trade of the signs referred to in Article 8(4) EUTMR (09/07/2010, T-430/08, Grain Millers, EU:T:2010:304, § 26; 29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 143). Therefore, use must be interpreted according to the particular type of right at issue and the opponent’s comments in this regard are set aside.

Second batch

It was due to the aforementioned comments made by the applicant, that the opponent submitted the second batch of evidence. This evidence was duly forwarded to the applicant and it was informed that no further submissions should be made (25/04/2016). However, on 09/08/2016, the Office annulled that communication and replaced it with a new version that gave the applicant a deadline and a right to reply.

In the decision of the Boards, specific reference to this set of evidence is made:

In that regard it is noted that the case-law on so-called ‘belated evidence’ is voluminous, a central point being that such evidence cannot be disregarded merely by virtue of being belated. The Opposition Division is under an obligation to exercise its discretion under Article 95(2) EUTMR by thoroughly assessing any such evidence in accordance with the criteria set out in European jurisprudence and in that regard the contested decision limited itself to merely holding that the evidence was ‘… anecdotal and unable to correct the numerous deficiencies identified…’ and in doing so, not only re-applied the incorrect conclusions described above but also failed to thoroughly conduct a substantive assessment regarding the veracity and relevance of the evidence (§ 22).

Considering the aforementioned and paragraph 25 of the same decision, the Opposition Division is bound to consider all arguments and make a full assessment of the admissibility of the evidence.

Giving full consideration to the present circumstances, the Opposition Division confirms that the second batch of evidence is admissible since it largely clarifies the first batch, merely supplementing rather than introducing any new factors. Indeed, the information helps describe the goods, which are rather sophisticated IT products as well as submitting further website extracts to support those firstly presented. It is true that the invoices are new, but again, they supplement the previously presented invoices and are in direct response to the criticisms from the applicant. Additionally, the right to be heard covers all matters of fact or law and evidence that form the basis for the decision.

In view of the foregoing, the Opposition Division finds that use of the mark commenced before the filing of the contested mark and that the use requirement has been fulfilled, at least for part of the activities, as will be seen below. The Opposition Divison does not find it necessary to enter into a detailed analysis of the mark itself since firstly this has not been questioned by the applicant and indeed the evidence clearly shows the mark is used as such in the course of trade.

As to the goods, based on the evidence, the Opposition Division finds it acceptable for all of the products listed. Even if it is true that the terminology used is not clear (fish dish, gert, crust) in the invoices, the pictures of products, comments and articles clarify such information and allow the proper connections to be made. The evidence clearly shows a range of different switches, sensors, circuit boards (gert and the fish dish for example can be used to showcase different interfacing techniques and also include buzzers), sound and vision apparatus, cables, plugs and other devices for providing electricity, adapters and so forth. Indeed, as submitted by the opponent, it provides goods that form kits for computers and ensure the provision of electricity and the evidence proves these claims.

However, as concerns ‘services’ the Opposition Division does not find that the evidence proves that the opponent is providing these services for third parties. It is true that the evidence in AS10 (instructables) has some tutorials on certain goods that emanate from the opponent but these tutorials merely demonstrate how the opponent’s goods work and/or how the goods can be assembled. There is nothing else concerning the provision of services and the tutorials on their own are patently not sufficient to sustain a finding that there has been more than mere local use for such activities.

Consequently, the examination of the opposition will only proceed on the basis of the goods previously listed and not the services.

b) The right under the applicable law

The Opposition Division refers to the previous decision from the Boards which established that the opponent had indeed fulfilled the conditions of providing the relevant national law. Indeed, in the appeal, the opponent submitted case law to fulfil such requisites (11/06/2009, T‑114/07 & T‑115/07, Last Minute Tour, EU:T:2009:196 and Phones4u Ltd & Anor v Phone4u.Co.UK & Ors [2006] EWCA Civ, 244).

As set out in ‘Reasons’, the Opposition Division is bound to consider the evidence submitted in the appeal and consequently the Opposition Division finds that the opponent has substantiated its right under the applicable law.

Furthermore, as can be seen from the listing of evidence, the opponent was using its right on the market before the filing date of the contested mark. On this note the opponent has queried the fact that the opponent does not put forward a date of first use. However, the witness statement does indicate a date and moreover, the evidence submitted demonstrates that use in the form of business transactions were already taking place in 2013 (see listing of evidence) which is prior to the filing of the contested mark.

Passing off

The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods and services in relation to its trade name. The evidence must show that the opponent’s trade name is recognised by the public as distinctive for the opponent’s goods and services. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods and services originate from the opponent. In other words, the public would be likely to believe that goods and services put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

1. Goodwill

Goodwill is described as ‘the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom’ (Inland Revenue Commissioners v Muller & Co's Margarine Ltd [1901] AC 217 at page 223).

Goodwill is established in proceedings in the UK by demonstrating use of the relevant mark in the marketplace in relation to the relevant activities. In fact goodwill refers to the value attached to a trading asset, it is the premium that would be paid in the acquisition of a business as a going concern. Consequently, goodwill does not equal reputation within the meaning of Article 8(5) EUTMR. Even small businesses can have goodwill, as established in Stannard v Reay [1667] R.P.C. 589 where it was held that a mobile fish and chips shop, with a turnover of between GBP 129 and GBP 138 per week, had acquired goodwill after trading for approximately three weeks. To revert to the applicant’s comments regarding the absence of goodwill given the ‘trivial’ nature of the evidence, such precedents also support the assertions made previously by the Opposition Division.

The Opposition Division has already assessed the use of more than mere local use and those findings are relevant here. Consequently there is goodwill for all the goods protected by the opponent’s right but not for the services, as previously discussed.

2. Misrepresentation

The contested trade mark must be likely to lead the public to believe that goods to be offered by the applicant are the opponent’s goods. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods in the belief that they are the opponent’s.

Therefore, a comparison of the signs is required.

Furthermore, the public is unlikely to be misled where the contested goods are dissimilar to those upon which the opponent’s goodwill has been built. Therefore, the contested goods and services must be compared to the goods for which the opponent has shown that it has acquired goodwill through use.

a) The signs

PI SUPPLY	PI
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

The signs coincide in ‘PI’ which will most probably be understood as the 16^th letter of the Greek alphabet or indeed as a maths concept. The fact that some of the contested services (see listing below) relate to science and technology could lead to a very loose association in this regard, but at most it is evocative. Consequently, on the whole, the element is considered distinctive.

The only differentiating element resides in the earlier mark’s second word ‘SUPPLY’ which is descriptive as it refers to the notion of ‘providing goods or services’.

Considering that the contested sign’s ‘PI’ is wholly included in the earlier mark’s first and most distinctive element, the signs are visually, aurally and conceptually similar to a high degree.

b) The goods and services

Before proceeding, it is important to address and highlight that within passing off, it is not strictly necessary that the parties concerned operate in a common field of activity (see to this effect Harrods v Harrodian School [1996] PRC 697, CA). However the presence (or absence) of a common field of activity is relevant to the issue of misrepresentation and likelihood of damage. As found in Annabel’s (Berkeley Square) Ltd v Schock [1972] FSR 261, CA, the parties respective field of activity are highly relevant to ‘whether there is any kind of association, or could be in the minds of the public any kind of association, between the fields of activities of the plaintiff and the fields of activities of the defendant’.

The opponent’s non-registered trade mark has acquired goodwill through use for:

Computer software; computer hardware; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; power supplies; electronic components; semiconductors; transistors; network boards; distribution boards; pc boards; digital boards; memory boards; circuit boards; electronic copy boards; electrical circuit boards; connection boards [electric]; memo boards [electronic]; panel boards [electricity]; flexible circuit boards; camera boards; computer circuit boards; printed circuit boards; electrical switch boards; computer interface boards; add-on circuit boards; computer add-on boards; system boards (mother cards); printed wiring boards; integrated circuit boards; distribution panel boards [electricity]; test adapters for testing printed circuit boards; add-on circuit boards for connecting computers to networking software; circuit distributors; circuit fuses; circuit testers; circuit closers; circuit breakers; circuit cards; decision circuits; focusing circuits; analogue circuits; logic circuits; hybrid circuits; printed circuits; electrical circuit testers; integrated circuit chips; integrated circuit modules; electronic circuit cards; electrical circuit breakers; integrated circuit memories; electric circuit interrupters; hybrid integrated circuits; printed electric circuits; computer network switches; high frequency switches; electric current switches; electronic touch sensitive switches; rotary cam limit switches; push button switches (electrical -); push leaf switches (electrical -); temperature control apparatus [electric switches]; change-over switches [for telecommunication apparatus]; temperature control apparatus [electric switches] for machines; temperature control apparatus [electric switches] for vehicles; battery adapters; power adapters; ethernet adapters; electric plug adapters; electric extension leads and extension outlet sockets; electric conductor wires and cables; electric couplings; electric connections; electric switchboxes; electric fuses; electric sensors; electric contacts; electric cells; electric batteries; electric convertors; electric rectifiers; electric plugs; electric oscillators; electric buzzers; electric cords; electric wire; electrical sockets; electrical inductors; electrical terminators; electrical armatures; electrical capacitors; electrical receivers; electrical coils; electric leads; electrical ducts; electrical meters; electrical conduits; electrical amplifiers; electric switching apparatus; connection plugs (electric -); electric current rectifiers; electric circuit interrupters; metallic cables [electric]; switch panels [electric]; heat resistant electric cables; plastic covered electric wires; data storage devices; memory storage devices; electricity storage apparatus; junction boxes [electricity]; branch boxes [electricity]; connection boxes [electricity]; wire connectors [electricity]; computer network adapters; flash card adapters; test adapters for testing printed circuit boards; high-frequency switching power supplies; wireless computer peripherals.

The opposition is directed against the following goods and services of the contested trade mark:

Class 9: Apparatus and instruments for conducting, switching, transforming, commutating, accumulating, regulating or controlling electricity; apparatus for recharging electrical accumulators; electric power converters; integrated circuits; semiconductors; computer software; semiconductor devices and integrated circuits for smart power operations and power conversion.

Class 41: Training in the design, development, testing, operation and use of integrated circuits and semiconductors; publication of videos, books, manuals, work instructions, data sheets, images and texts related to integrated circuits and semiconductors and their design, development, testing, operation and use, also in electronic form; information, advice and consultancy regarding all aforementioned services.

Class 42: Scientific and technological services and research and design relating thereto in the field of integrated circuits and semiconductors; industrial analysis and research services in the field of integrated circuits and semiconductors; design, development and testing of integrated circuits and semiconductors; design, development and testing of computer software in the field of integrated circuits and semiconductors; information, advice and consultancy regarding all aforementioned services.

Contested goods in Class 9

The goods in this class are patently connected to the goods from the opponent to which use in the course of trade has been established. Firstly some of the goods are clearly identical, such as the contested software, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity equally covered by the earlier right.

Secondly some of the contested goods namely, integrated circuits and integrated circuits for smart power operations and power conversion overlap to an extent with those of the opponent such as the variety of circuit boards listed above, also leading to identity.

It should also be highlighted that circuit boards are generally made of semiconductors such as silicon. Semiconductors allow electrical conductivity, conversion, amplification and switching. Indeed, the contested apparatus and instruments for commutating, electricity; apparatus for recharging electrical accumulators; electric power converters; semiconductors; semiconductor devices for smart power operations and power conversion are all used to regulate, convert, recharge and process electricity in some way as is the case with the opponent’s power adapters, electric convertors; electrical capacitors; electrical receivers; electrical coils; electric leads; electrical ducts; electrical meters; electrical conduits; electrical amplifiers; electric switching apparatus; connection plugs (electric -); electric current rectifiers; electric circuit interrupters. Consequently such goods are likely to be found in the same distribution channels, same outlets and will be made by the same manufacturers and aimed at the same consumers rendering them at least highly similar.

Contested services in Class 41 and 42

The Opposition Division also notes that the services in these classes also relate to the same field of activities of the opponent as the services directly concern the opponent’s goods. Furthermore, the opponent’s goods are intended to be used for training purposes as has been evidenced in the materials provided by the opponent. The goods from the opponent are devised to build computers and teach people about computers and programming and the contested services in Class 41 are clearly related.

Given the circumstances the relevant public would clearly be led to believe that the services in Class 41 are actually being provided by the opponent. This conclusion also extends to Class 42 which, in some ways, shows even more connections with the goods under the earlier right. Indeed, it is usual market practice for providers of such goods in Class 9 to also provide design, development and testing services and general technological services in this regard. Even if scientific, industrial analysis and research services are more technical and specialised services, they still relate to the same goods as the opponent’s and indeed, for the goods to be fit for purpose analysis and research are necessary. Moreover, in some ways there is a fine line between technology and science and they can largely be considered as converging industries that overlap in know-how, methodology and there is a clear transfer.

In view of the foregoing, the goods in Class 9 are identical and at least highly similar whilst the services show an important relationship to those of the opponent and indeed are within the same field of activity.

Therefore, there is misrepresentation.

3. Damage

As well as demonstrating goodwill and that a misrepresentation is likely to occur, the opponent must show that the misrepresentation by the applicant has caused damage

to its goodwill, or that damage to the opponent’s goodwill is reasonably foreseeable. Indeed, ‘... it is not essential to the success of a passing off action that the defendant should misrepresent his goods as those of the plaintiff. It is sufficient that he misrepresents his goods in such a way that it is a reasonably foreseeable consequence of the misrepresentation that the plaintiff’s business or goodwill will be damaged’ (Reckitt and Colman Products Limited v Borden Inc. and others [1990] 08 February 1990 UKHL 12, quoted in 21/03/2016, R736/2015-5, DEEP PURPLE / DEEP PURPLE, §36).

Damage includes loss or diversion of sales, as well as erosion of goodwill by dilution, blurring or tarnishment (see Phones 4U Ltd v Phone4U.co.uk Internet Ltd [2007] RPC 5 at paragraph 14).

The opponent has proven that it enjoys goodwill for goods which show important connections with those of the contested goods and services. As seen above, the signs are highly similar. Given these factors, consumers are likely to attribute the contested sign to the opponent and sales of the opponent’s goods could be affected and the contested goods may unduly profit from the earlier mark’s goodwill. As noted previously, the opponent is not obliged to prove that it has suffered actual damage, it is sufficient that damage is likely and indeed, the loss of sales is foreseeable.

The Opposition Division considers that, in the absence of any indications to the contrary, the opponent is likely to suffer damage.

Considering all the above, the Opposition Division finds the opposition is well founded on the basis of the opponent’s earlier sign. Therefore, the contested trade mark must be rejected for all the contested goods and services.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Frédérique SULPICE

Vanessa PAGE

Richard BIANCHI

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.