OPPOSITION No B 1 916 751

Brite-Strike Technologies SA, 59 Boulevard Grande Duchesse Charlotte, 1330 Luxembourg, Luxembourg (opponent), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative)

a g a i n s t

Brite-Strike Technologies, Inc., 11 Raffaele Road, Camelot Industrial Park, Plymouth, MA 02360, United States (applicant), represented by Barkhoff Reimann Vossius, Prinzregentenstr. 74, 81675 München, Germany (professional representative).

On 25/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 916 751 is upheld for all the contested goods.

2. European Union trade mark application No 9 979 014 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 9 979 014 for the word mark ‘Brite-Strike’, namely against all the goods in Class 11. The opposition is based on Benelux trade mark registration No 877 058 for the word mark ‘Brite-Strike’. The opponent invoked Article 8(1)(a) and (b) and Article 8(3) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

In the present case, the contested trade mark was published on 14/07/2011.

Earlier trade mark No 877 058 was registered on 04/02/2010. Therefore, and as the earlier mark had not been registered for five years when the contested mark has been published, the request for proof of use is inadmissible.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

a) The goods

The goods on which the opposition is based are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

The contested goods are the following:

Class 11: Apparatus for lighting, in particular flashlights, apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Apparatus for lighting, in particular flashlights, apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes are identically contained in both lists of goods, given that the term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

b) The signs

Brite-Strike	Brite-Strike
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

The goods and the signs are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(a) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(b) and Article 8(3) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Claudia ATTINÀ

Birgit FILTENBORG

Marine DARTEYRE

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.