OPPOSITION Nо B 3 122 708

Xiangjin Shi, Longhua New District, Minzhi Street, Baishilong 1 Area Blue Card Building 140, 301 Room, 518000 Shenzhen, People’s Republic of China (opponent), represented by Wolfgang Hellmich, Lortzingstr. 9/2. Stock, 81241 München, Germany (professional representative)

a g a i n s t

Shenzhen Nalanqing E-Commerce Co., Ltd., Rm 102, Blk 7, Lane 1, North of Bantian Food St., Bantian St., Longgang Dist., Shenzhen, People’s Republic of China (applicant), represented by A.Bre.Mar. S.R.L., Via Servais, 27, 10146 Torino, Italy (professional representative).

On 29/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 122 708 is partially upheld, namely for the following contested goods:

Class 28: Games; apparatus for games; controllers for game consoles; ornaments for Christmas trees, except lights, candles and confectionery; Christmas crackers [party novelties].

2. European Union trade mark application No 18 204 714 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

On 29/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 204 714 (figurative mark). The opposition is based on the following earlier rights:

 European Union trade mark registration No 15 233 612 for the word mark ‘Potok’

 non-registered sign in Belgium, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, the EU, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden and the United Kingdom for the word ‘Potok’

 trade name in Belgium, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, the EU, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden and the United Kingdom for the word Potok;

 company name in Belgium, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, the EU, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden and the United Kingdom for the word Potok;

 sign protected by the law of passing off in the United Kingdom and Ireland for the word Potok.

The opponent invoked Article 8(1)(b) EUTMR in relation to the European Union trade mark registration No 15 233 612 and Article 8(4) EUTMR in relation to the remaining earlier rights.

EARLIER UK RIGHTS

On 01/02/2020, the United Kingdom (UK) withdrew from the European Union (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(4) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that the United Kingdom non-registered trade mark, trade name, company name and sign protected by the law of passing off, namely ‘Potok’, no longer constitute a valid basis of the opposition.

The opposition must therefore be rejected as far as it is based on these earlier rights.

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 9: 3D spectacles; earphones; spectacle cases; mouse pads; computer keyboards; headphones; monitoring apparatus, electric; loudspeakers; microphones; sound recording apparatus; baby monitors; watchbands that communicate data to smartphones.

Class 11: Light bulbs; headlights for automobiles; lamps; bicycle lights; pocket searchlights; Chinese lanterns; electric lights for Christmas trees; searchlights; street lamps; aquarium lights; cooking apparatus and installations; roasting apparatus; light-emitting diodes [led] lighting apparatus; automobile lights.

The contested goods are the following:

Class 28: Toys; toys for pets; games; apparatus for games; controllers for game consoles; board games; balls for games; rackets; apparatus for achieving physical fitness [for non-medical use]; skateboards; jump ropes; fishing tackle; ornaments for Christmas trees, except lights, candles and confectionery; swimming rings; roller skates; knee guards [sports articles]; swimming jackets; Christmas crackers [party novelties]; trampolines; yoga straps.

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 games; apparatus for games; controllers for game consoles are similar to the opponent’s 3D spectacles in Class 9. On the market, there are smart glasses with a 3D optical head-mounted display and spatial sound. These goods may be sold together with the applicant’s games and accessories. There is a certain complementary link between them and they coincide in producers and distribution channels. They also target the same public.

The contested ornaments for Christmas trees, except lights, candles and confectionery; Christmas crackers [party novelties] are similar at least to a low degree to the opponent’s electric lights for Christmas trees in Class 11. These goods serve the same general purpose of decorating Christmas trees. They are sold in the same outlets and target the same public.

The remaining contested goods, namely toys; toys for pets; board games; balls for games; rackets; apparatus for achieving physical fitness [for non-medical use]; skateboards; jump ropes; fishing tackle; swimming rings; roller skates; knee guards [sports articles]; swimming jackets; trampolines; yoga straps, are all toys, non-electronic gaming or sporting goods with no relation to the opponent’s goods in Classes 9 and 11. Even if, as the opponent argues, the contested goods are equipped with software (which is not included in the opponent’s goods), electronics or lights, this is not sufficient reason to find them similar. Nowadays, although more and more apparatus function using integrated software or electronic functions, this does not automatically mean that these goods are similar to all electronic goods or lighting apparatus. These goods differ in nature, purpose and methods of use and are neither complementary nor in competition. Moreover, they do not have the same commercial origin. Even if some of the conflicting goods can be sold in the same sections of supermarkets or outlets and target the same public, as is the case for baby monitors and toys, the customers do not expect them to be produced by the same or economically linked undertakings. They also satisfy different needs as they serve different purposes. Consequently, all the abovementioned goods are considered 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 similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

Potok
Earlier trade mark	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 element ‘POTOK’, present in both signs, means stream in Czech, Polish and Slovak. As it has no clear and direct meaning in relation to the relevant goods, it is distinctive. For the remaining part of the public, it has no meaning and is, therefore, also distinctive.

The figurative element of the contested sign, composed of three black circles connected with a black line, has no clear direct meaning in relation to the relevant goods and is considered distinctive.

Visually, the signs coincide in ‘POTOK’, which is the whole earlier mark and the sole verbal element of the contested sign. However, they differ in the contested sign’s figurative element of and its depiction, which is not very elaborate. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the signs are similar to an average degree.

Aurally, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as meaning ‘stream’, the signs are conceptually similar to a high degree, at least for the Czech-, Polish- and Slovak-speaking public.

Neither of the signs has a meaning for the remaining 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.

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 did not explicitly claim that their mark is particularly distinctive by virtue of intensive use or reputation.

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

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).

The goods are partly similar to varying degrees and partly dissimilar. They target the public at large and professionals. The level of attention varies from average to high.

The signs are visually similar to an average degree and aurally identical. Conceptually, the signs are either similar to a high degree or the conceptual comparison is neutral.

The common element, ‘POTOK’, is the whole earlier word mark and the sole verbal element in both signs. Both signs will be referred to aurally as ‘Potok’.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar 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 directed at these goods cannot be successful.

NON-REGISTERED MARKS 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:

 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;

 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.

a) The right under the applicable law

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely non-registered signs, trade names, company name, sign protected by the law of passing off in Ireland. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

Moreover, the only evidence with regard to the use of the sign ‘POTOK’ is two extracts from the website www.amazon.de with regard to sporting articles, namely fitness bands with the logo ‘Potok’. The evidence submitted by the opponent is insufficient to prove that the earlier signs were used in the course of trade of more than local significance in connection with the goods on which the opposition was based before the relevant date and in the relevant territories as it does not provide any information concerning the commercial volume and the duration and frequency of use.

Therefore, the opposition is 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. 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

Anna BAKALARZ

Katarzyna ZANIECKA

Monika CISZEWSKA

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.