OPPOSITION No B 3 089 804

Industrias Lacteas Asturianas, S.A., Calle Velázquez, 140, 28006, Madrid, Spain (opponent), represented by Juan Carlos Riera Blanco, Avda. Concha Espina, 8 - 6º D, 28036, Madrid, Spain (professional representative)

a g a i n s t

Inova Semiconductors GmbH, Grafinger Str. 26, 81671 München, Germany (applicant), represented by Jochen Reich, Herrnstr. 15, 80539 München, Germany (professional representative).

On 25/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 089 804 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 in Classes 9 and 11 of European Union trade mark application No 18 046 123 ‘ILaS’ (word mark). The opposition is based on Spanish trade name registration No 286 977 ‘ILAS’ (word) used in the course of trade in Spain in relation to goods and services in Classes 29, 35, 39 and 40. The opponent invoked Article 8(4) EUTMR.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested trade mark was filed on 02/04/2019. Therefore, the opponent was required to prove that the sign on which the opposition is based, namely Spanish trade name registration No 286 977 ‘ILAS’, was used in the course of trade of more than local significance in Spain prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for goods and services in Classes 29, 35, 39 and 40.

On 15/01/2020 the opponent filed evidence in order to prove use of its trade name in the course of trade (Items 1 to 6). However, at this point and for reasons of procedural economy, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if use in the course of trade of more than local significance of the earlier Spanish trade name had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

Consequently, the Opposition Division will proceed the examination under the assumption that the opponent’s sign was used in the course of trade of more than local significance in Spain for all the goods and services before the filing date of the contested trade mark.

The right under the applicable law and vis-à-vis the contested trade mark

Trade names are the names used to identify businesses. Trade names are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

In the present case, the opposition is based on Spanish trade name ‘ILAS’ filed on 29/06/2009, registered under registration No 286 977 on 20/10/2009 and renewed until 29/06/2029. The opponent duly filed the necessary registration and renewal documents and translations thereof. In addition, it specified in the notice of opposition that it wishes to rely on online substantiation (pursuant to Article 7(3) EUTMDR) for the identification of the contents of the relevant national law and for the identification of the

particulars concerning the filing or registration of the earlier right and indicated the addresses of the respective online sources.

Furthermore, in its observations the opponent quotes and/or refers to the applicable Law, that is Spanish Trademarks Act 17/2001 of 07/12/2001 and Articles 2, 7 and 87. It attached, as Item 6, the original text of Articles 2, 7 and 87 of the Spanish Trademarks Act and the respective translations in the language of the proceedings.

According to the Spanish trademark law governing the sign in question,

Article 2. Acquisition of the right.

1. The right of ownership in the trademark and trade name shall be acquired by valid registration in accordance with the provisions of this Law.

Article 7. Prior Trade Names.

1. Signs may not be registered as trademarks:

(a) which are identical to a prior trade name designating activities identical to

the goods or services for which the trademark is applied for

(b) which, because they are identical or similar to a prior trade name and because the activities designating the goods or services for which the trademark is applied for are identical or similar, there is a risk of confusion on the part of the public; the risk of confusion includes the risk of association with the prior trade name.

2. For the purposes of this Article, prior trade names shall mean earlier trade

names:

(a) trade names registered in Spain whose application for registration has a

filing date or priority date prior to that of the application under examination

(b) applications for the trade names referred to in the foregoing paragraph, provided that they are finally registered.

Title X, Trade names,

Article 87, Concept and applicable rules.

(1) A trade name is any sign capable of graphic representation which identifies an undertaking in the course of trade and serves to distinguish it from other undertakings carrying on identical or similar activities.

(2) In particular, the following may constitute trade names:

- surnames, corporate names and the names of legal entities;

- fanciful names;

- names which refer to the object of the business activity;

- anagrams and logos;

- images, figures and drawings;

- any combination of such signs

Therefore, according to the respective provisions and as argued by the opponent, the invoked under Article 8(4) EUTMR Spanish trade name is protected against subsequent marks as per the same criteria as those applicable to conflicts between registered marks, namely the presence of a likelihood of confusion: identity or similarity between the signs, identity or similarity between the goods or services.

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.

Comparison of the goods and services

The opposition is directed against the following goods:

Class 9: Electric and electronic components, namely for illuminators, luminaires and lighting installations, lighting apparatus and lighting fittings, in particular in the form of ambience light, exterior light or interior light and in particular for automotive use, consumer use and industrial use.

Class 11: Illuminators, luminaires and lighting installations, lighting apparatus and lighting fittings, in particular in the form of ambience light, exterior light or interior light and in particular for automotive use, consumer use and industrial use, including parts of the aforesaid goods.

The opponent’s trade name covers the following goods and services:

Class 29: Meat, fish, birds and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, fruit sauces; Egg, milk, butter, cheese and dairy products; Edible oils and fats.

Class 35: Import and export of milk, milk products and dairy products.

Class 39: Transport, packaging services, storage and delivery of milk and dairy products.

Class 40: Treatment of materials.

As regards the goods in Class 29, the opponent mentions that the goods on which the opposition is based are Milk and dairy products (in the notice of opposition) and the enclosed certificates of the same date cover the following goods in Class 29: Meat, fish, birds and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, fruit sauces; Egg, milk, butter, cheese and dairy products; Edible oils and fats. Furthermore, in is subsequent observations of 15/01/2020 the opponent mentions the following goods as regards Class 29: Milk, butter, cheese and dairy products; Edible oils and fats. The Opposition Division will take into consideration all the registered goods in Class 29, which is the broadest scope of the opponent’s goods. This is the best case scenario for the opponent and does not affect negatively the interests of the applicant as regards the final outcome.

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 Classes 9 and 11 include goods such as illuminators, luminaires, lighting installations, lighting apparatus, lighting fittings and electric and electronic components thereof. These goods are clearly dissimilar to all the goods and services on which the opposition is based. The opponent’s goods and services belong to entirely different business sectors (food manufacturing; import and export of milk and dairy products; transport, storage, packaging and delivery of milk and dairy products; treatment of materials) and have no relevant points of contact with the applicant’s lighting and illuminating apparatus and electric and electronic components thereof.

The contested goods and the goods and services, on which the opposition is based differ in nature and/or specialisation and are addressed to a different kind of public. Their purpose and method of use are different and they are neither in competition, nor complementary. The goods and services at issue are usually not manufactured or provided by the same undertaking or economically-linked undertakings and do not have the same distribution channels.

Apart from claiming that the signs are identical/highly similar and that there is a likelihood of confusion, including a likelihood of association for the public, the opponent did not argue that there is similarity between the respective goods and services. The Opposition Division does not concur with the opponent’s statement that even if there is no similarity between the goods/services, a likelihood of confusion can be established.

As seen above, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions is not fulfilled, and the opposition must be rejected.

Therefore, given that at least one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as not well founded under Article 8(4) 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 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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Reiner SARAPOGLU

Liliya YORDANOVA

Gueorgui IVANOV

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.