OPPOSITION Nо B 3 092 052

 

Tacwise Group PLC, 1 Connections Business Park, Otford Road, Sevenoaks TN14 5DF, United Kingdom (opponent), represented by Wedlake Bell LLP, 71 Queen Victoria Street, London EC4V 4AY, United Kingdom (professional representative) 

 

a g a i n s t

 

Shenzhen Aukey E-Business Co., Ltd., Huanan City, Electronic Trading Building, P09 Room 102, Longgang District, Shenzhen, China (applicant), represented by Arpe Patentes y Marcas, S.L., C/Proción, 7, Edificio América Li, Portal 2, 1ºc, 28023 Madrid-Aravaca, Spain (professional representative).

On 14/01/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 092 052 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 18 034 807 (figurative mark). The opposition is based on European Union trade mark registration No 3 272 424 ‘TACWISE’ (word mark). The opponent invoked  Article 8(1)(b) and Article 8(5) 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:

 

Class 7: Machine tools, pneumatic tools, electric tools, cordless tools, parts and fittings for the aforesaid goods.

Class 8: Hand tools and implements, hand operated pneumatic tools, hand operated electric tools, hand operated cordless tools, parts and fittings for the aforesaid goods.

The contested goods are the following:

Class 9: Light-emitting electronic pointers; rearview cameras for vehicles; car video recorders; electric wire harnesses for automobiles; transformers [electricity]; distribution boxes [electricity]; converters, electric; electrical adapters; fire extinguishers; theft prevention installations, electric; pince-nez; sunglasses; batteries, electric, for vehicles; battery boxes; batteries for lighting; battery chargers; batteries, electric; photovoltaic cells; charging stations for electric vehicles; rechargeable batteries; plugs, sockets and other contacts [electric connections]; battery jump starters; inverters [electricity]; consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters.

Class 12: Anti-skid chains; trailer hitches for vehicles; hoods for vehicles; ski carriers for cars; brake pads for automobiles; cycles; cycle frames; pumps for bicycle tires; tires for vehicle wheels; repair outfits for inner tubes; civilian drones; air pumps [vehicle accessories]; suspension shock absorbers for vehicles; luggage carriers for vehicles; safety seats for children, for vehicles; luggage nets for vehicles; seat covers for vehicles; upholstery for vehicles; brake discs

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.

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.

 

Bevor entering into the comparison of goods, it is helpful to first clarify what the goods of the opponent are. Although divided into two classes, namely Classes 7 and 8, these are in the broad sense tools, which are ‘any instrument or simple piece of equipment that you hold in your hands and use to do a particular kind of work’ (information extracted from the Collins Dictionary on 10/01/2020 at https://www.collinsdictionary.com/dictionary/english/tool). The division into the Classes 7 and 8 of the Nice classification systems depends on whether these are machine tools (Class 7) or mainly hand-operated tools and implements (Class 8). Furthermore, the opponent’s tools are divided in their function whether pneumatic (with air pressure), electric (with electricity), cordless (with a battery inside) tools.

Contested goods in Class 9

After having clarified the opponent’s goods, it is clear that they are dissimilar to the contested goods which are batteries, electrical components and products in the broad sense. The intended purpose of the two sets of goods is distinct: the applicant’s good are for passing, transforming and charging electricity, hearing music, while the opponent’s goods are tools for a specific kind of work. Their method of use is distinct: the opponent’s goods do not transform or charge electricity or are used to listen to music. In contrast, the opponent’s tools are designed to change, alter, or transform the materials on which they act.

Nor are the goods in competition with each other. The applicant’s electricity/music products cannot be substituted by any of the opponent’s tools. Equally, there is no complementarity between the goods, even if some of the tools might require electricity to function, the contested goods are not indispensable to the opponent’s or vice versa. Furthermore, the producers, distribution channels and sales outlets are different. Finally, further to the opponent’s arguments, although it may be true that both the applicant’s and the opponent’s goods are found in the same hardware stores, they are not found in the same sections. Even if they may target the same consumer, these factors alone are insufficient to find similarity between the goods.

Contested goods in Class 12

The contested goods are mostly car accessories (anti-skid chains; hoods; ski carriers; brake pads; safety seats for children), civilian drones and cycles and accessories. Their purpose is different, whilst the goods of the earlier mark are used to carry out work (see above definition) the goods in this class are final products for vehicles and despite the opponent’s arguments none of them can be considered as tools. The mere fact that the opponent’s goods may be used in order to manufacture the contested products or use as components or spare parts is not sufficient to render the relevant goods similar. These goods differ in their nature, intended purposes and usual producers and distribution channels. The goods are neither in competition nor complementary. Consequently, the contested goods are dissimilar to 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.

 

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

As the opponent also invoked Article 8(5) EUTMR, the Opposition Division will proceed to its assessment.

 

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.

 

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

 

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

 

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

 

a) Reputation of the earlier trade mark

  

According to the opponent, the earlier trade mark has a reputation in the European Union.

 

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

 

In the present case, the contested trade mark was filed on 13/03/2019.Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely for:

Class 7: Machine tools, pneumatic tools, electric tools, cordless tools, parts and fittings for the aforesaid goods.

Class 8: Hand tools and implements, hand operated pneumatic tools, hand operated electric tools, hand operated cordless tools, parts and fittings for the aforesaid goods.

The opposition is directed against the following goods:

Class 9: Light-emitting electronic pointers; rearview cameras for vehicles; Car video recorders; electric wire harnesses for automobiles; Transformers [electricity]; Distribution boxes [electricity]; converters, electric; electrical adapters; fire extinguishers; Theft prevention installations, electric; Pince-nez; Sunglasses; Batteries, electric, for vehicles; Battery boxes; batteries for lighting; Battery chargers; Batteries, electric; Photovoltaic cells; charging stations for electric vehicles; Rechargeable batteries; Plugs, sockets and other contacts [electric connections]; Battery jump starters; Inverters [electricity]; Consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters.

Class 12: Anti-skid chains; Trailer hitches for vehicles; hoods for vehicles; ski carriers for cars; brake pads for automobiles; Cycles; Cycle frames; pumps for bicycle tires; tires for vehicle wheels; Repair outfits for inner tubes; civilian drones; Air pumps [vehicle accessories]; Suspension shock absorbers for vehicles; luggage carriers for vehicles; safety seats for children, for vehicles; luggage nets for vehicles; Seat covers for vehicles; upholstery for vehicles; brake discs for vehicles; Tire inflators.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

 

On 09/03/2020 the opponent submitted the following evidence:

 

 Appendix 1: screenshots of the opponent’s website and third party sites, in which the sign ‘TACWISE’ appears on different type of staplers and nailers among other products of Class 8, which are offered for sale. These screenshots were printed on 31/01/2020 from the following websites (38):

o www.toolstation.com

o www.screwfix.com

o www.transtools.co.uk

o www.fixingguns.co.uk

o www.machinemart.co.uk

o www.kwiknail.com

o www.insulationsuperstore.co.uk

o www.roofingsuperstore.co.uk

o www.betcofasteners.com

o www.tradefixdirect.com

o www.buyaparcel.com

o www.toolandfix.com

o www.cromwell.co.uk

o www.collatedfasteners.co.uk

o www.tooled-up.com

o www.buchandhickman.com

o www.toollineuk.com

o www.lawson-hits.co.uk

o www.mytoolkit.co.uk

o www.toolstation.nl

o www.toolbank.com

o www.cpc.farnell.com

o www.securallfasteneings.ie

o www.mikov.cz

o www.hornback.cz

o www.ikh.fi

o www.toolstation.nl

o www.prof-praxis.com

o www.dva.dk

o www.tackerwinkel.nl

o www.mcquillantools.ie

o www.hammerjack.eu

o www.combind.eu

o www.kjell.com

o www.justfasten.ie

o www.amazon.co.uk

o www.amazon.fr

o www.amazon.es

o www.amazon.de

o www.amazon.it

As can be seen from the domain names endings, these websites are in different countries which can also be inferred from the language therein. They include the Czech Republic, Denmark, Germany, Finland, France, Italy, Republic of Ireland, Italy, Spain, Sweden. and the United Kingdom. The opponent’s goods under the sign ‘TACWISE’ are sold by retailers and wholesalers.

 Appendix 2: an overview of the sales figures in £ (English Pounds) under the sign ‘TACWISE’, elaborated by the opponent, during the years 2009-2019. They are listed country by country. However, the products are not visible.

 Appendix 3: screenshots printed on 31/01/2020 of consumers reviews from different Amazon websites, namely amazon.co.uk/ -.it/ -.es/ -.de/ and -.fr. The opponent argues that through these materials it is evidenced that the sign has become very well known to consumers and traders in the European Union. These consumers reviews are dated between 2015-2019.

www.amazon.co.uk	251 customers’ reviews
www.amazon.de	19 customers’ reviews
www.amazon.it	40 customers’ reviews
www.amazon.es	70 customers’ reviews
www.amazon.fr	167 customers’ reviews

 Appendix 4: screenshot of the definition ‘tacks’ in the Collins dictionary from 28/01/2020, which states ‘a tack is a short nail with a broad, flat head, especially one that is used for fastening carpets to the floor’; ‘if you tack something to a surface, you pin it there with tacks or drawing pins’.

 Appendix 5: screenshots of social media numbers printed on 31/01/2020 of Twitter with 3670 followers, facebook with 152 likes and 186 follows.

 Appendix 6: screenshot of amazon.co.uk, amazon.fr, amazon.it, amazon.es, and lionshome.co.uk websites in which different products side by side bearing the sign TACKLIFE and TACWISE are offered. Printed on 31/01/2020.

 Appendix 7: screenshot of the waybackmachine, in which tacklifetools are offered from 20/03/2017 until 13/10/2019, saved 46 times; tacwise has been saved 128 times from 26/04/2003 until 20/01/2020 and some screenshots of these elder webpages from 2003, 2006, 2007, 2008, 2009, 2011, 2016, 2018.

 Appendix 8: screenshots of a heat gun, a nail gun, a hammer tacker, a paint sprayer, a cordless hot melt glue gun, a stapler and an air nail gun on amazon.co.uk one bearing the sign TACKLIFE and next to it the same product bearing the TACWISE brand. Printed on 31/01/2020.

The opponent has submitted, inter alia, evidence relating to the United Kingdom with a view to demonstrating the reputation of the earlier EUTM. However, it follows from Article 8(5) EUTMR, worded in the present tense, that the conditions for applying it must also be fulfilled at the time of taking the decision. As the UK is no longer a member of the EU, the evidence relating to its territory cannot be taken into account to prove reputation ‘in the EU’.

The opponent has to prove that the earlier mark has reputation at the time of filing of the contested mark, namely 13/03/2019. Most of the evidence provided by the opponent are screenshots printed on 31/01/2020. Even though, through some of these it can be evidenced that the sign ‘TACWISE’ has been on the market at least from 2015, the screenshots simply demonstrate that the goods were made available but there is no indication of any degree of recognition

Through the country codes of the websites and the languages therein (Appendix 1 and 3), it can be inferred that the sign has been offered online in various countries in the European Union, such as Germany, France, Spain and Italy.

Furthermore, it can be clearly seen that the sign ‘TACWISE’ has been used for numerous goods of Class 8 including but not limited to heat gun, a nail gun, a hammer tacker, a paint sprayer, a cordless hot melt glue gun, a stapler and an air nail gun (Appendix 1, 3, 6 and 8).

However, reputation requires recognition of the mark by the relevant public. Although the geographical area where the mark has been used and the time frame are clear from the evidence provided, the recognition of the mark by the relevant public has not been proven. The number of reviews from the different Amazon webpages is not high, only over 550 in five countries in around a four year long time frame (Appendix 3). Furthermore, the reviews relate to a particular product and the purchaser’s views on the product characteristics, but as a whole they do not reveal any information on the degree of recognition of the brand. Not even the number of followers and likes from the social media are overwhelming (Appendix 5). It should be noted that the information filed under Appendix 2, in which the sales figures per country are noted originates from the opponent itself, and not from an independent third party. Although according to the document these figures refer only to the ‘TACWISE’ trade mark claimed, the information is not divided with regard to the goods in question. As this was not done, the information in the form in which it was submitted cannot be evaluated with any degree of security. The opponent should have provided the Office with a clear overview of the earlier trade mark and the goods concerned. The fact that this is not the case must be taken into account.

Other documents that could help prove the reputation of the earlier trade mark, such as advertising expenses (divided between the individual signs and the individual goods); invoices; market share; opinion polls; traffic surveys; contributions from professional associations and/or extracts from tax and/or commercial balance sheets were not submitted. Indeed there is an absence of information relating to the market share held by the mark and the intensity of use that would help determine the recognition of the mark. Further there is nothing concerning the promotional activities undertaken by the opponent such as advertising or even sponsorship of events; the nature and scale of such activities are useful to gauge the trade mark awareness among the public

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark ’TACWISE’ acquired any degree of reputation.

In conclusion, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

 

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

 

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

 

 

Vanessa PAGE

Astrid Victoria WÄBER

Reiner SARAPOGLU

 

 

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.