OPPOSITION No B 2 213 018

Suomi-Soffa SSF Oy, Tiilipojanlenkki 6, 01720 Vantaa, Finland (opponent), represented by Kolster Oy AB, Iso Roobertinkatu 23, 00120 Helsinki, Finland (professional representative)

a g a i n s t

Finlandia Group Oyj, Aleksanterinkatu 44, 00100 Helsinki, Finland (applicant), represented by Petri Hietalahti, Finlandia Group Oyj, Aleksanterinkatu 44, 00100 Helsinki, Finland (employee representative).

On 02/03/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 213 018 is upheld for all the contested services.

2. Community trade mark application No 10 751 402 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of Community trade mark application No 10 751 402. The opposition is based on Community trade mark registration No 7 555 519. The opponent invoked Article 8(1)(a) and (b) CTMR.

DOUBLE IDENTITY (ARTICLE 8(1)(a) CTMR)

Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall 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.

The wording of Article 8(1)(a) CTMR clearly requires identity between both the signs concerned and the goods/services in question. This situation is referred to as ‘double identity’. Whether or not there is double identity is a legal finding to be established from a direct comparison of the two conflicting signs and the goods/services in question.

1. The services

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

Class 35: Advertising; business management; business administration; office functions; and all the services in the alphabetical list of Class 35 of the 9th edition of the Nice Classification (2007).

The contested services are the following:

Class 35: Advertising; business management; business administration; office functions; and all the services in the alphabetical list of Class 35 of the 10th edition of the Nice Classification (2012).

The contested CTM application seeks protection for the entire class heading of Class 35 of the Nice Classification. It was filed on 23/03/2012. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards Community trade mark applications filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 10th edition.

Applying the same principles, since the earlier CTM is registered for the entire class heading in Class 35, it is also deemed to cover all the goods included in the alphabetical list of this class. However, given that it was filed on 28/01/2009, the alphabetical list covered by the earlier mark is that of the 9th edition of the Nice Classification.

Advertising; business management; business administration; office functions are included in both specifications and are, therefore, identical.

As regards the services in the alphabetical list of Class 35 (10th edition) covered by the contested mark, the Opposition Division finds that they are also identical to the services covered by the earlier mark, either because they appear in the alphabetical list of Class 35 in the 9th edition or because they fall within the natural and usual meaning of the general indications specified in the earlier mark.

2. The signs

FINLANDIA	FINLANDIA
Earlier trade mark	Contested sign

The signs are identical.

3. Conclusion

The signs and the services are identical. Therefore, the opposition is well founded according to Article 8(1)(a) CTMR on the basis of the opponent’s Community trade mark registration No 7 555 519. It follows that the contested sign must be rejected for all the contested goods.

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

COSTS

According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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

Andrea VALISA

Karin KUHL

Adriana VAN ROODEN

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.