OPPOSITION No B 3 076 866

Codel International Limited, Station Building, Station Road, DE45 1GE, Bakewell, United Kingdom (opponent), represented by Franks & Co Limited, 15, Jessops Riverside, Brightside Lane, S9 2RX, Sheffield, United Kingdom (professional representative)

a g a i n s t

CODEL Technology Ltd., Flat 32 Adventures Court, 12 Newport Avenue, E14 2DN London, United Kingdom (applicant), represented by AL & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 27/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 076 866 is upheld for all the contested goods.

2. European Union trade mark application No 18 014 321 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 18 014 321 (figurative). The opposition is based on European Union trade mark registration No 17 869 522 and United Kingdom trade mark registration No UK00002519270, both for the word mark ‘CODEL’, in relation to which the opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR. The opponent invoked also Article 8(3) and Article 8(4) EUTMR in relation to non-registered trade marks ‘CODEL’, ‘CODEL INTERNATIONAL’ and , used in the course of trade in the United Kingdom.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 17 869 522.

1. The goods

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

Class 9: Sensors; measuring apparatus; monitoring apparatus; gas sensors; gas monitoring apparatus; dust sensors; dust monitors; dust monitoring apparatus; air sensors; air monitors; air monitoring apparatus; air analysis apparatus; air measurement and control equipment; gas measurement and control equipment; smoke measurement and control equipment; dust measurement and control equipment; marine sensors; opacity sensors; opacity monitors; computer analysis equipment for opacity sensing and opacity monitoring; pollution sensors; pollution monitors; particulate sensors; particulate monitors; smoke detectors; smoke monitors; flue gas analysers; road tunnel sensors and monitors; rail tunnel sensors and monitors; underground mine sensors and monitors; detection equipment for the presence or absence of flames in fuel burners; stack emission monitoring equipment; multi channel stack emission monitors; flue gas stack emissions monitors; stack emission gas analysers; automated emission monitoring apparatus; flow monitor; air flow monitors; gas flow monitors; boiler monitoring equipment; electrochemical sensors; broken bag detectors; bag filter monitoring; speedometers; meteorological instruments; gas testing instruments; metal detectors for industrial or military purposes; anemometers; photometers; optical apparatus and instruments; exposure meters [light meters]; associated spare parts, fittings and cartridges for all the aforesaid goods.

The contested goods are the following:

Class 9: Speedometer testers; Air analysis apparatus; Meteorological instruments; Gas testing instruments; Smoke detectors; Metal detectors for industrial or military purposes; Anemometers; Photometers; Optical apparatus and instruments; Exposure meters [light meters].

Air analysis apparatus; meteorological instruments; gas testing instruments; smoke detectors; metal detectors for industrial or military purposes; anemometers; photometers; optical apparatus and instruments; exposure meters [light meters] are all identically contained in both lists of goods (including synonyms).

The contested speedometer testers are included in the broad category of the opponent’s measuring apparatus. Therefore, they are identical.

2. The signs

CODEL
Earlier trade mark	Contested sign

Although the contested sign is applied as a figurative mark, it consists in fact of the word ‘CODEL’ written in ordinary upper-case letters. Consequently, the differences between the two marks are so insignificant that they will go unnoticed by the relevant public (see judgment of 20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 50-54).

In view of these findings, the marks are considered identical.

3. Conclusion

In the present case, 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.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right, namely European Union trade mark registration No 17 869 522 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).

Likewise, 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 grounds of the opposition, namely Article 8(1)(b) and Article 8(3), (4) and (5) 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

Anna ZIÓŁKOWSKA

Katarzyna ZANIECKA

Martin INGESSON

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.