OPPOSITION No B 3 050 983

Orbis Textil GmbH & Co. KG, Kruppstr. 20, 58553, Halver, Germany (opponent), represented by Bockhorni & Brüntjen Partnerschaft Patentanwälte mbB, Elsenheimerstr. 49, 80687, Munich, Germany (professional representative)

a g a i n s t

True Timber Outdoors Holding Company LLC, 150 Accurate Way 29349 Inman, United States of America (applicant), represented by Potter Clarkson LLP, The Belgrave Centre, Talbot Street NG1 5GG, Nottingham, United Kingdom (professional representative).

On 21/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 983 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 422 106 for the figurative mark namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 3 603 784 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with 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 filing or, where applicable, the date of priority 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.

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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.

1. The signs

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 earlier mark is a figurative mark. It is made of the two letters ‘TC’ depicted in black ordinary capital letters. The letter ‘T’ is placed on a slightly superior line.

The contested sign is also a figurative mark. It consists of a stylized white device with a black outline with a vertical line in the middle branching out to both sides and ending in a curved arrows shape. This element is superimposed on a sort of crescent moon shape device.

In its observations of 14/09/2018 the opponent claims that the contested sign contains, as the earlier mark, the single letters ‘T’ and ‘C’.

However, the Opposition Division does not share this interpretation. The depiction of the contested sign strongly departs form the common way in which the letters ‘T’ and ‘C’ are normally characterized. It is clear that that for the relevant public the perception of that sign as the two letters ‘TC’, as claimed by the opponent, is not the most obvious perception since the elements that compose the contested sign rather call to mind graphic symbols devoid of any semantic content.

Consequently, the most likely assumption in regard to the perception of the signs at issue by the relevant public is not that suggested by the opponent.

Visually, the signs do not coincide in any of their element. The shape, the position, the colour, the outline and the arrangement of their element is different. It is true that they display a remote resemblance in the way some of their elements are depicted. However, the Opposition Division considers that those coincidences are extremely vague and for these reasons, as the signs do not visually coincide in any element, it can be safely concluded that the signs are not visually similar.

Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs do not coincide in any element, they are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Riccardo RAPONI

Andrea VALISA

Andrea VALISA

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.