OPPOSITION No B 2 531 310

Green & Green S.A., Salita degli Olivi 14, 6976 Castagnola, Switzerland (opponent), represented by Francesco Fabio, Via San Michele del Carso 4, 20144 Milano, Italy (professional representative)

a g a i n s t

Farm and Garden Machinery Limited, Waterloo Industrial Estate, Waterloo Road, Bidford on Avon, Alcester, B50 4JH Warwickshire, United Kingdom (applicant), represented by FRKelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative).

On 25/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 531 310 is upheld for all the contested goods.

2. European Union trade mark application No 13 907 522 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 13 907 522 for the word mark ‘HARRY’. The opposition is based on international trade mark registration No 1 232 089 designating the European Union for the word mark ‘HARRY’. The opponent invoked Article 8(1)(a) and (b), and Article 8(5) EUTMR.

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.

1. The goods

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

Class 7: Machine tools; machines and machine tools for agriculture and gardening; agricultural machines; motors and engines (other than for land vehicles); machine couplings and transmission components (other than for land vehicles); agricultural implements other than hand-operated; clippers (machines); lawnmowers (machines).

The contested goods are the following:

Class 7: Horticultural and agricultural machinery and implements; parts and fittings for the aforesaid goods.

The adjective ‘horticultural’ refers to the art or practice of garden cultivation and management. Accordingly, horticultural and agricultural machinery is identically contained in both lists of goods (albeit using slightly different wordings).

The contested agricultural implements include, as a broader category, the opponent’s agricultural implements other than hand-operated. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested horticultural implements include, for instance, saws and also some machines, such as a chainsaw, which is a mechanical power-driven cutting tool with teeth set on a chain which moves around the edge of a blade. Accordingly, these contested goods are included in, or overlap with, the broad category of the opponent’s machines for agriculture and gardening. Therefore, they are identical.

The contested parts and fittings for the aforesaid goods (horticultural and agricultural machinery and implements) include, as a broader category, or overlap with, the opponent’s machine couplings and transmission components (other than for land vehicles). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. The signs

HARRY	HARRY
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

In the present case, the goods and the signs are identical.

The applicant argues that its EUTM has been used for many years and it has been associated with the applicant as a result of that use. In other words, the applicant claims reputation of the EUTM and filed various items of evidence to substantiate this claim.

However, the right to a EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for all the contested 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(5) 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

Aldo BLASI

Marta GARCÍA COLLADO

Marianna KONDAS

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.