OPPOSITION No B 3 085 833

Audio Design Lautsprecher Vertriebs GmbH, Am Breilingsweg 3, 76709 Kronau, Germany (opponent), represented by Gollhofer Weidlich Leser-Rechtsanwälte Steuerberater, Lessingstr. 1, 68165 Mannheim, Germany (professional representative)

a g a i n s t

Altium LLC, 4225 Executive Square Suite 700, 92037 La Jolla, California, United States of America (applicant), represented by A2 Estudio Legal, Calle Javier Ferrero, 10, 28002 Madrid, Spain (professional representative).

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

DECISION:

1. Opposition No B 3 085 833 is upheld for all the contested goods.

2. European Union trade mark application No 18 005 918 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 18 005 918 for the word mark ‘CONCORD’, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 17 969 667 for the word mark ‘Concord’. 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.

a) The goods

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

Class 9: Entertainment electronics apparatus, in particular apparatus for receiving, recording, transmission or reproduction of sound or images, including amplifiers, headphones, loudspeakers, cabinets for loudspeakers and hi-fi systems; vehicles (navigation apparatus for -) [on-board computers]; navigational instruments; computers; wearable computers; monitors [computer hardware]; monitors [computer programs]; peripherals adapted for use with computers; recorded computer programs, other than computer programs for producing typefaces and fonts; downloadable computer programs, other than computer programs for producing typefaces and fonts; recorded computer software, other than computer programs for producing typefaces and fonts; interfaces for computers; multi-media apparatus; moniceivers; naviceivers; acoustic loudspeaker systems, acoustic loudspeaker components, acoustic sound systems, loudspeakers, stereo audio systems, noise suppression apparatus and computer-generated sound systems; electric and electronic apparatus and devices, namely apparatus and instruments for retrieval, storage, input, output, processing, display and transmission of data, sound and images; none of the aforesaid goods in relation to lighting apparatus, lighting installations, lighting equipment or with equipment in relation to lighting.

The contested goods are the following:

Class 9: Computer software used for database management and collaboration in electronic design automation.

The contested computer software used for database management and collaboration in electronic design automation overlaps with the opponent’s recorded computer software, other than computer programs for producing typefaces and fonts; none of the aforesaid goods in relation to lighting apparatus, lighting installations, lighting equipment or with equipment in relation to lighting. Therefore, they are identical.

b) The signs

Concord	CONCORD
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Since both marks are word marks, it is the word as such that is protected. Therefore, it is irrelevant, for the purposes of the comparison of word marks, if one of them is written in title-case letters and the other in upper-case letters.

The signs are identical.

c) Conclusion

The goods have been found to be identical, as well as the signs. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR.

In its observations, the applicant argues that the earlier trade mark ‘Concord’ is a generic term and that it is used in several EUTM registrations, some of which are for the relevant goods.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘CONCORD’. Under these circumstances, the applicant’s claims must be set aside.

It follows that the contested trade mark must be rejected for all the contested goods.

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.

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

Denitza STOYANOVA-VALCHANOVA

Lidiya NIKOLOVA

Marta Maria CHYLIŃSKA

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.