OPPOSITION No B 2 829 979

Minus Inc., #309 - 1688 - 152nd Street, V4A4N2 Surrey, Canada (opponent), represented by Lane IP Limited, The Forum, St Paul’s, 33 Gutter Lane, London EC2V 8AS, United Kingdom (professional representative)

a g a i n s t

BHS Trans Kft., Pallag utca 7., 2120 Dunakeszi, Hungary (applicant), represented by Oppenheim Ugyvedi Iroda, Karolyi u. 12., 1053 Budapest, Hungary (professional representative).

On 04/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 829 979 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 European Union trade mark application No 15 877 822 for the figurative mark . The opposition is based on European Union trade mark registrations No 13 501 887 and No 10 942 415 both for the word mark ‘ENTER.’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PRELIMINARY REMARK ON EARLIER TRADE MARK No 13 501 887

On 22/01/2019, the Cancellation Division issued a decision and declared European Union trade mark registration No 13 501 887 ‘ENTER.’ invalid for some of the goods, namely non-alcoholic beverages; beers in Class 32. The trade mark remained registered for the other goods, namely alcoholic beverages, except beer in Class 33. This decision became final.

As a result, the examination will proceed only on the basis of the abovementioned goods in Class 33 insofar as EUTM registration No 13 501 887 is concerned.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.

On 17/10/2017 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material, namely before 22/05/2017. Further to the extension of the cooling off period and the extension of the deadline on the opponent’s request, this time limit expired on 23/11/2019.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned. Therefore the examination will continue on the basis of the other ground invoked, namely 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.

a) The goods and services

The goods and services on which the opposition is based are the following:

EUTM No 13 501 887

Class 33: Alcoholic beverages, except beer.

EUTM No 10 942 415

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; fire-extinguishing apparatus; prerecorded compact discs; vinyl records; digital video discs; downloadable audio and audio-visual files in the nature of MP3, WMA (windows media audio), WAV (windows wave), RM (real media), WMV (windows media video), and SWF (shock wave file) files all of the foregoing containing music; USB cards and bags, namely, laptop computer bags; cellular, smartphone and handheld computer accessories namely, carry cases, protective cases and face plates.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments; jewellery namely, necklaces, bracelets, earrings, pins and rings.

Class 24: Textiles and textile goods, not included in other classes; bed covers; table covers; towels.

Class 25: Clothing, footwear, headgear; t-shirts; sweatshirts; scarves.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; entertainment in the form of live musical concerts and interactive musical experiences; production of audio video DVD's and digital streams and compact discs all of the foregoing containing music.

The contested goods are the following:

Class 32: Energy drinks.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 energy drinks are non-alcoholic beverages containing stimulant compounds, such as caffeine, allegedly providing enhance mental and/or physical performances. The opponent’s goods in Class 33 are alcoholic beverages. They differ from the contested goods as they have a distinct nature, intended purpose, based on the presence or absence of alcohol in their composition. They usually come from different undertakings. Moreover, even though alcoholic drinks can be mixed with non-alcoholic ones, these beverages are not usually sold by the same undertakings or, at least, not under the same mark. Therefore, they are dissimilar.

The remaining opponent’s goods and services mainly consist in scientific apparatus and instruments, IT equipment and smartphones and their accessories in Class 9, jewellery in Class 14, textile goods in Class 24, clothing, footwear and headgear in Class 25, and education, sporting, and cultural services in Class 41. They are even more dissimilar to the contested goods as they have no point in common. They differ in their nature, purpose and method of use. They usually come from different undertakings. They are not in competition or complementary. 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 and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must also be rejected on this ground.

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 applicant 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 applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Cindy BAREL

Julie, Marie-Charlotte HAMEL

Frédérique SULPICE

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.