OPPOSITION No B 3 065 137

Laboratório Edol-Produtos Farmacêuticos, S.A., Av. 25 de Abril, 6, 6 A, 2795-195 Linda-A-Velha, Portugal (opponent), represented by Filipa Romão, Rua Actor Chaby Pinheiro, nº 4 R/C dto, 2795-060 Lisbon, Portugal (professional representative)

a g a i n s t

Amperex Technology Limited, 3503 Wharf Cable TV tower, 9 Hoi Shing Road, Tsuen Wan, N.T. Hong Kong (applicant), represented by GLP S.r.l., Viale Europa Unita 171, 33100 Udine (UD), Italy (professional representative).

On 30/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 137 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 17 895 602 (figurative mark). The opposition is based on European Union trade mark registration No 5 003 901 ‘A T L CREME’ (word mark) and Portuguese trade mark registration No 400 760, ‘A T L CRÈME’ (word mark). The opponent invoked 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

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

European Union trade mark registration No 5 003 901

Class 3: Perfumery, cosmetics, essential oils.

Class 5: Pharmaceutical specialities.

Portuguese trade mark registration No 400 760

Class 3: Perfumery, cosmetics, essential oils for personal use, gels, bath and shower salts, nonmedicated, cakes of toilet soap, body deodorants, hair lotions, make-up preparations, shampoos, gels, aerosols, mousses and balms for combing and care of hair, dentifrices

The contested goods are the following:

Class 9: Notebook computers; tablet computers; smartglasses; smartwatches; computer software, recorded; satellite navigational apparatus; smartphones; virtual reality headsets; batteries for vehicles; electric accumulators for vehicles; battery boxes; accumulator boxes; high tension batteries; battery chargers; batteries; electric accumulators; photovoltaic cells; solar batteries; portable power supplies, namely, portable battery chargers and rechargeable batteries.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 goods in Class 9 are information technology devices and accessories, and peripherals thereof, such as notebook computers; tablet computers; smartwatches; smartphones or software such as computer software, recorded or apparatus and instruments for accumulating and storing electricity such as batteries for vehicles; electric accumulators for vehicles; battery boxes; accumulator boxes; high tension batteries; battery chargers; batteries; electric accumulators; solar batteries. None of the contested goods have anything in common with any of the opponent’s goods covered by the earlier marks in Class 3 (perfumery, cosmetics, essential oils) and Class 5 (pharmaceutical specialities). The contested goods and the goods covered by the earlier marks belong to different market sectors which do not intersect with each other. They have different natures and purposes. Different know-how is needed in the production and use of the goods in question. The distribution channels do not overlap either, as the opponent’s and the applicant’s activities are distinct and their goods are sold at different stores or outlets. Furthermore, the contested goods and the opponent’s goods do not coincide in producers, they are not in competition nor are they complementary. Their relevant publics are also different. Therefore, the contested goods are dissimilar to all the opponent’s goods.

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.

The opponent claimed that the earlier trade marks ‘ATL Crème’ and ‘ATL CRÈME’ are well-known marks. However, given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark, this finding would still be valid even if the opponent had filed evidence to support its claim and even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness.

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, 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

Irina SOTIROVA

Birute SATAITE-GONZALEZ

Rosario GURRIERI

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.