OPPOSITION No B 3 071 201

Asal Vision S.L., Marmolista, 8 - 10, 29013 Málaga, Spain (opponent), represented by Iberpatent, Félix Boix, 9-1° Derecha, 28036 Madrid, Spain (professional representative)

a g a i n s t

Solomon Technology Corporation, 6F. NO. 42 Singjhong Rd., Neihu District, 11494 Taipei City, Taiwan (applicant), represented by Cabinet Chaillot, 16-20 Avenue de L'Agent Sarre, 92703 Colombes Cedex, France (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 201 is upheld for all the contested goods.

2. European Union trade mark application No 17 939 902 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 939 902 ‘Solvision’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 14 398 606 ‘SOLVISION’ (word mark) The opponent invoked Article 8(1)(a) and (b) EUTMR.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

1. The goods and services

The goods and services on which the opposition are, inter alia, based are the following:

Class 9: Optical apparatus and instruments.

The contested goods, after a limitation, are the following:

Class 9: Optical inspection apparatus for industrial use.

The goods are identical since the contested goods are included in the broader category of the opponent’s goods.

2. The signs

SOLVISION	Solvision
Earlier trade mark	Contested sign

Both signs are word marks and irrespective of the use of lower case or upper case, the terms themselves are subject to protection. (20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33; 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43; 25/06/2013, T-505/11, dialdi, EU:T:2013:332, § 65).´

Therefore the signs are identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical and the contested goods, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR.

The applicant comments on the opponent’s and the applicant’s business activities and argues that the parties are active in different fields of trade and that the opponent’s goods and services are not similar to the goods the applicant intends to offer on the market. However, the task of the Opposition Division is to compare the goods as they appear in the respective lists and not only those goods that the parties are effectively offering, or intend to offer, on the market. Consequently, the applicant’s arguments must be rejected.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(a) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(b) EUTMR.

As the earlier European Union trade mark registration No 14 398 606 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, 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

Loreto URRACA LUQUE

Cynthia DEN DEKKER

Francesca DRAGOSTIN

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.