OPPOSITION DIVISION
OPPOSITION Nо B 3 114 061
Take-Two Interactive Software, Inc., 110 West 44th Street, 10036 New York, United States of America (opponent), represented by Fieldfisher LLP, The Capel Building Mary's Abbey, D07 N4C6 Dublin 7, Ireland (professional representative)
a g a i n s t
Igoteck
Europe S.L.U., Calle Leganitos 47,
7, 28013 Madrid, Spain (applicant), represented by Inlex
IP Expertise, Plaza San
Cristobal, 14, 03002 Alicante, Spain (professional
representative).
On 27/04/2021, the Opposition
Division takes the following
DECISION:
1. |
Opposition No B 3 114 061 is partially upheld, namely for the following contested goods: |
3. |
Each party bears its own costs. |
On
13/03/2020, the opponent filed an opposition against all the goods
of European Union trade mark
application No 18 162 213
(figurative mark). The opposition is based on the following trade
mark registrations in relation to which the opponent invoked
Article 8(1)(b) and Article 8(5) EUTM:
1) EUTM registration No 1 154 764 ‘GTA’;
2) EUTM registration No 17 774 167
;
3) United Kingdom trade mark registration No
UK 00 003 288 019
;
4) EUTM registration No 17 784 109
.
Moreover, the opponent invoked Article 8(4) EUTMR in relation to the non-registered trade mark ‘GTA’, used in the course of trade in the territories of all EU Member States and the United Kingdom.
EARLIER UK MARKS
On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1), Article 8(4) and Article 8(5) EUTMR, worded in the present tense, must also be fulfilled at the time of taking the decision.
Insofar as the opposition is based on the UK trade mark registration No 00 003 288 019 and a non-registered trade mark used in the course of trade in the UK, it no longer has a valid basis, and must be dismissed.
The examination of the opposition will proceed in relation to the remaining earlier rights invoked.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
I. EARLIER EUTM No 17 784 109
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 EUTM registration No
17 784 109
.
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.
Class 9: Computer and video game programs and software; downloadable computer and video game programs and software; pre-recorded digital media featuring computer games and video games, and graphics, videos, films, multimedia files, motion pictures, and animation in the field of video games and computer games.
The contested goods are the following:
Class 9: Magnetic data carriers, recording discs; DVDs; compact discs; digital recording media; mechanisms for coin-operated apparatus; cash registers; calculators; computers; data processing equipment; computer software; fire-extinguishing apparatus; mobile telephones; hands free kits for phones; cordless telephones; telephone apparatus; video telephones; wires, electric; cell phone straps; cell switches [electricity]; cases for smartphones; covers for tablet computers; selfie sticks [hand-held monopods]; smartphones; smart rings; smartglasses; tablet computers; wearable activity trackers; connected bracelets [measuring instruments]; USB flash drives; downloadable ring tones for mobile phones; computer keyboards; computer game programs; computer peripheral devices; computer software [recorded]; mouse [computer peripheral]; mouse pads; monitors [computer hardware]; printers for use with computers; optical discs; compact disc players; MP3 players; MP4 players; amplifiers; batteries; battery chargers; camcorders; cameras; televisions; headphones; antennas; modems; photographic apparatus and instruments; cinematographic machines and apparatus; optical apparatus and instruments; weighing apparatus and instruments; nautical apparatus and instruments; surveying apparatus and instruments; measuring apparatus and instruments; checking (supervision) apparatus and instruments; signalling apparatus and instruments; life-saving apparatus and instruments; scientific apparatus and instruments; teaching apparatus and instruments; apparatus and instruments for controlling electricity; apparatus and instruments for accumulating electricity; apparatus and instruments for switching electricity; apparatus and instruments for transforming electricity; apparatus and instruments for regulating electricity; apparatus and instruments for conducting electricity; sound transmitting apparatus; apparatus for the transmission of images; apparatus for the reproduction of images; sound reproduction apparatus; apparatus for recording images; sound recording apparatus.
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.
The contested DVDs, compact discs, digital recording media, computer software, computer game programs, computer software [recorded] and optical discs are identical to the opponent’s goods, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.
The contested magnetic data carriers and recording discs include those that are pre-recorded. They differ from the opponent’s pre-recorded digital media containing computer games, films etc. in their nature, but have the same purpose, and usually coincide in producers, end users and distribution channels. Furthermore they are in competition. Therefore, these goods are highly similar.
The contested compact disc players, MP3 players, MP4 players, amplifiers, televisions, teaching apparatus and instruments (which include audiovisual teaching apparatus and instruments), sound transmitting apparatus, apparatus for the transmission of images, apparatus for the reproduction of images and sound reproduction apparatus usually have the same producers, end users and distribution channels as the opponent’s pre-recorded digital media containing computer games, films etc. Furthermore they are complementary, as the opponent’s goods can be played on or with the help of the contested goods. Consequently, these goods are considered to be highly similar.
The contested camcorders, cameras, photographic apparatus and instruments, cinematographic machines and apparatus, optical apparatus and instruments (which include cameras), apparatus for recording images and sound recording apparatus rather serve to record than to play content. They usually have at least the same end users and distribution channels as the opponent’s computer software, and are complementary to these goods. Some of them also have the same producers. Therefore, they are at least similar to the opponent’s goods.
The contested cash registers, calculators, computers, data processing equipment, mobile telephones, cordless telephones and telephone apparatus (which include mobile phones), video telephones, smartphones, smart rings, smartglasses, tablet computers, wearable activity trackers and connected bracelets [measuring instruments], which are all computers of some sort nowadays, usually have the same producers, relevant public and distribution channels as the opponent’s computer software. Furthermore they are complementary. The corresponding software can be purchased independently from the goods, for example, to give them more or different functionalities. It follows that these goods are similar.
The contested USB flash drives, computer keyboards, computer peripheral devices, mouse [computer peripheral], monitors [computer hardware], printers for use with computers and modems are devices used with computers, as opposed to the goods listed in the previous paragraph, which are used on their own. Yet they can have the same producers as the opponent’s computer software, and they are complementary to these goods. Therefore, it is considered that they are similar to a low degree.
The contested downloadable ring tones for mobile phones and the opponent’s computer software usually have the same end users and distribution channels. Furthermore they are complementary. It follows that these goods are similar to a low degree.
The contested hands free kits for phones, cell phone straps, cases for smartphones, covers for tablet computers, selfie sticks [hand-held monopods], mouse pads and headphones on the other hand, although they are also used with computers or mobile devices, are accessories rather than peripheral devices, which do not use software or the opponent’s specific software at all or if so, that software is integrated. The goods are not complementary because they are not aimed at the same public. The producers are not the same, nor are the distribution channels, and they do not have the same purpose. This also applies when compared to the remaining of the opponent’s goods, which are pre-recorded digital media. Therefore, these goods are considered to be dissimilar.
The same reasoning applies when comparing the opponent’s goods with the contested weighing apparatus and instruments, nautical apparatus and instruments, surveying apparatus and instruments, measuring apparatus and instruments, checking (supervision) apparatus and instruments, signalling apparatus and instruments, life-saving apparatus and instruments, scientific apparatus and instruments, apparatus and instruments for controlling electricity, apparatus and instruments for accumulating electricity, apparatus and instruments for switching electricity, apparatus and instruments for transforming electricity, apparatus and instruments for regulating electricity, apparatus and instruments for conducting electricity, which are all apparatus and instruments which may use integrated software, but have no points of contact under the abovementioned criteria with the opponent’s goods. It follows that they are dissimilar.
The contested mechanisms for coin-operated apparatus, fire-extinguishing apparatus, wires, electric, cell switches [electricity], batteries, battery chargers and antennas have no points of contact whatsoever with the opponent’s goods under the abovementioned criteria. These goods are obviously dissimilar.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical or similar (to various degrees) are directed both at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention may vary from average to higher, depending on the specialised nature of the goods, the frequency of purchase and their price.
|
|
Earlier trade mark |
|
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The verbal element ‘GTAO’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.
Although the letter ‘t’ in the contested sign is rather stylized, it is easily perceptible within the verbal element ‘G-tab’.
The component ‘tab’, which is separated from the letter ‘G’ by a hyphen in the contested sign, will be understood by a part of the public as meaning, inter alia, ‘a small flap of material, especially one on a garment for decoration or for fastening to a button’ or ‘an additional webpage or document page that can be opened on a web browser or spreadsheet’ (https://www.collinsdictionary.com/dictionary/english/tab) in English, German and other languages. However, as none of its meanings is descriptive in relation to the relevant goods at hand, this component is distinctive.
The signs have no elements that could be considered clearly more dominant than other elements.
Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Visually, the signs coincide in the letters ‘G(*)ta*’ and in the fact that they are both made up of four letters. They differ in their last letters, ‘O’ and ‘b’, respectively, as well as in their graphical stylisation/typeface and in the hyphen included in the contested sign.
However, it has to be noted that in the present case, the round shape of the letter ‘b’ in the contested sign is quite close to that of a letter ‘o’. Taking into account also that the main difference between the signs is found in their last letter, the signs are visually highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, it is reasonable to assume that at least a significant part of the public will pronounce both marks in two syllables, and the letter ‘G’ separately, not only because of the hyphen in the contested sign, but also as the sequence of consonants ‘GT’ at the beginning of a word is difficult to pronounce. In that case, the pronunciation of the signs is the most similar, as it coincides in the syllables ‘G-ta*’ and differs only in the last phonemes, ‘o’ and ‘b’, respectively.
Aside from other options, another part of the public might be led to pronounce the letters of the earlier mark individually, in four syllables. In that case, the pronunciation of the signs is the least similar, as it only coincides in the syllable ‘G’ and partially in the sounds of the letters ‘t’ and ‘a’.
Therefore, the aural similarity of the signs is likely to vary from high to low, depending on the respective pronunciation.
Conceptually, neither of the signs has a meaning for a part of the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs in that case.
For the part of the public to which the component ‘tab’ of the contested sign conveys a meaning, as explained above, the earlier mark still has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness due to its reputation but did not file any evidence in order to prove such a claim.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
e) Global assessment, other arguments and conclusion
The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Account is also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).
The marks are both made up of four letters and coincide at their beginnings, whereas the only differing letter is placed at the very end of both marks and, moreover, is visually similar. All this results in a high visual similarity of the marks.
As regards the relevant goods, consumers will purchase them in specialised shops, online or in physical outlets, where they can themselves choose them or be assisted by the sales staff. Whilst oral communication in respect of the products and the trade marks is not excluded, the visual perception of the marks in question will generally take place prior to purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50).
Consequently, the highly similar visual overall impression, possibly blurred by the consumers’ imperfect recollection of the marks, counteracts the aural differences between the marks, which are bigger for a part of the public than for the other, and the conceptual discrepancies, which exist for a part of the public.
Therefore, even the part of the public for which the marks are not aurally highly similar, and do not have any meaning which could help consumers distinguish between them, may be mistaken about the origin of the goods found to be identical or similar, including those which have been found to be similar to a low degree and in relation to which the degree of attention is considered to be higher.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public. Therefore, the opposition is partly well founded on the basis of the opponent’s earlier EUTM No 17 784 109.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and this earlier right, and directed at these goods, cannot be successful.
The examination of the opposition will continue insofar it is based on the other earlier trade marks.
II. EARLIER EUTMs No 1 154 764 AND No 17 774 167
a) The goods and services
The goods on which the opposition is based are the following:
1) EUTM No 1 154 764 ‘GTA’
Class 9: Computers; computer hardware, computer software, computer games, video games, electronic games, computer programmes; discs; cassettes; coin, card or counter operated arcade game machines and amusement apparatus; parts and fittings for all the aforesaid goods.
Class 16: Printed matter; printed manuals; leaflets; newsletters; pamphlets; posters; brochures; hint books; packaging materials; promotional printed matter.
Class 28: Games and playthings; computer games; video games; electronic games; amusement apparatus; parts and fittings for all the aforesaid goods.
2)
EUTM No 17 774 167
Class 9: Computer and video game programs and software; downloadable computer and video game programs and software; pre-recorded digital media featuring computer games and video games, and graphics, videos, films, multimedia files, motion pictures, and animation in the field of video games and computer games.
Class 41: Entertainment services, namely, providing online games, providing a website featuring computer games and video games.
The remaining contested goods are the following:
Class 9: Mechanisms for coin-operated apparatus; fire-extinguishing apparatus; hands free kits for phones; wires, electric; cell phone straps; cell switches [electricity]; cases for smartphones; covers for tablet computers; selfie sticks [hand-held monopods]; mouse pads; batteries; battery chargers; headphones; antennas; weighing apparatus and instruments; nautical apparatus and instruments; surveying apparatus and instruments; measuring apparatus and instruments; checking (supervision) apparatus and instruments; signalling apparatus and instruments; life-saving apparatus and instruments; scientific apparatus and instruments; apparatus and instruments for controlling electricity; apparatus and instruments for accumulating electricity; apparatus and instruments for switching electricity; apparatus and instruments for transforming electricity; apparatus and instruments for regulating electricity; apparatus and instruments for conducting electricity.
Some of the contested goods are identical or similar to goods on which the opposition is based, for example parts and fittings for all the aforesaid goods (coin operated arcade game machines and amusement apparatus) and mechanisms for coin-operated apparatus. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods assumed to be identical are directed both at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention may vary from average to higher, depending on the specialised nature of the goods, the frequency of purchase and their price.
c) The signs
1) GTA
2)
|
|
Earlier trade marks |
Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The verbal element ‘GTA’ of the earlier marks has no meaning for the relevant public and is, therefore, distinctive. As earlier mark 1) is a word mark, it is the word as such which is protected and not its written form.
Although the letter ‘t’ in the contested sign is rather stylized, it is easily perceptible within the verbal element ‘G-tab’.
The component ‘tab’, which is separated from the letter ‘G’ by a hyphen in the contested sign, will be understood by a part of the public as meaning, inter alia, ‘a small flap of material, esp one on a garment for decoration or for fastening to a button’ or ‘an additional webpage or document page that can be opened on a web browser or spreadsheet’ (https://www.collinsdictionary.com/dictionary/english/tab) in English, German and other languages. However, as none of its meanings is descriptive in relation to the relevant goods at hand, this component is distinctive.
The signs have no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the letters ‘G(*)ta*’. They differ in the number of letters they are made up of, in the last letter, ‘b’, and in the hyphen included in the contested sign, as well as in the graphical stylisation/typeface of earlier mark 2) and the contested sign.
The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.
Apart from differences in the respective, rather limited graphical stylisation of earlier mark 2) and the contested sign, both earlier marks are composed of three letters each, whereas the contested sign is made up of four letters and a hyphen.
These differences are easily perceptible and lead to substantial differences in the overall impressions of the signs. It follows that the signs are visually similar to a very low degree only.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, it is reasonable to assume that at least a significant part of the public will pronounce the letters of both earlier short signs individually, in three syllables, since it is rather unlikely that they will be perceived as complete words. In that case, the pronunciation of the signs is the least similar, as it only coincides in the syllable ‘G’ and partially in the sounds of the letters ‘t’ and ‘a’.
However, it cannot be excluded that the earlier marks are pronounced in two syllables, and the letter ‘G’ separately, as the sequence of consonants ‘GT’ at the beginning of a word is difficult to pronounce. In that case, the pronunciation of the signs is the most similar, as it coincides in the syllables ‘G-ta*’ and differs only in the last phoneme of the contested sign, ‘b’.
Therefore, the aural similarity of the signs is likely to vary from high to low, depending on the respective pronunciation.
Conceptually, neither of the signs has a meaning for a part of the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs in that case.
For the part of the public to which the component ‘tab’ of the contested sign conveys a meaning, as explained above, the earlier mark still has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier marks
The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent claimed that the earlier trade marks enjoy enhanced distinctiveness due to their reputation but did not file any evidence in order to prove such a claim.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.
e) Global assessment, other arguments and conclusion
The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
It is true that the signs coincide in their beginnings, which first catch the attention of the reader, and account has to be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).
However, the earlier marks each consist of only three letters and the contested sign of four and, moreover, contains a hyphen, placed rather at the beginning of the sign. These are relevant factors to consider when evaluating the likelihood of confusion between the conflicting signs. Consumers will immediately spot the differences between the marks, which have a substantial impact on their overall impressions.
In this regard, it is important to note that consumers will purchase the relevant goods in specialised shops, online or in physical outlets, where they can themselves choose them or be assisted by the sales staff. Whilst oral communication in respect of the products and the trade marks is not excluded, the visual perception of the marks in question will generally take place prior to purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50).
In the present case, it has not been proven that the earlier marks enjoy enhanced distinctiveness, and the level of attention of the relevant consumers is considered not to be below average.
Taking into account all the above, the substantial visual differences cannot be outweighed by the high aural similarity that exists between the marks for a part of the relevant public, or the fact that they do not have any meaning for a part of the public which could help consumers distinguish between them, despite the fact that the goods at issue have been deemed to be identical. This is even more true for the part of the public for which the aural similarity between the marks is lower, and for which the marks are conceptually dissimilar on account of the meaning included in the contested sign.
Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as it is based on EUTMs No 1 154 764 and No 17 774 167 and directed against the remaining contested goods listed under Point a) of this section.
The examination of the opposition will continue insofar as it is based on the grounds of Article 8(5) and Article 8(4) EUTMR.
REPUTATION — ARTICLE 8(5) EUTMR AND NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR
In relation to all earlier registered EUTMs, the opponent has also invoked Article 8(5) EUTMR.
Moreover, the opponent also based the opposition on a non-registered trade mark used in the course of trade in the territories of all EU Member States in relation to Article 8(4) 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.
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.
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.
According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, according to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.
In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier non-registered mark in the course of trade, or any evidence of the alleged reputation of the earlier registered trade marks.
On 08/04/2020 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was subsequently extended and finally expired on 13/10/2020.
The opponent did not submit any evidence of use in the course of trade of the earlier non-registered mark on which the opposition is based in relation to Article 8(4) EUTMR, or any evidence concerning the reputation of the registered trade marks on which the opposition is based in relation to Article 8(5) EUTMR.
Given that necessary requirements of Article 8(4) and Article 8(5) EUTMR are not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Carmen SÁNCHEZ PALOMARES |
Natascha GALPERIN
|
María Belén IBARRA |
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.
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May 27, 2021Fleet Feet Inc, through franchises, company-owned retail stores, and online stores, sells running and fitness merchandise, and has 182 stores, including franchises, nationwide in the US.
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May 22, 2021Marks And Spencer Plc, Waterside House, 35 North Wharf Road, London W2 1NW, United Kingdom, (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Grays Inn Road, London WC1X 8BT, United Kingdom (professional representative)