OPPOSITION Nо B 3 088 651

 

Mountfield A.S., Mirošovická 697, 251 64 Mnichovice, Czech Republic (opponent), represented by Jana Vandelikova, Petrska 1136/12, 110 00 Praha 1, Czech Republic (professional representative) 

 

a g a i n s t

 

Elon Group AB, Box 220 94, 702 03 Örebro, Sweden (applicant), represented by Advokatfirman Lindahl Kb, Studentgatan 6, 211 38 Malmö, Sweden (professional representative).

On 14/01/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.

Opposition No B 3 088 651 is partially upheld, namely for the following contested goods and services: Class 7: Machines and machine tools for household and gardening purposes, power operated tools; scissors, electric; power saws; lawnmowers [machines]; agricultural machines; regulators [parts of machines]; blades sharpening machines; knives, electric; drilling machines; power hammers; screwdrivers, electric; nail extractors, electric; mortising machines; milling machines; straw [chaff] cutters; machines and apparatus for cleaning, electric; raking machines; rakes for raking machines; parts, components and accessories for the aforementioned goods. Class 8: Hand tools and hand implements (hand-operated); agricultural implements, garden tools and garden architect tools; pruners [hand tools]; trowels [gardening]; sprayers for use in horticulture [hand tool]; tree pruners; hedge trimmers; insecticide vaporizers and spray bottles [hand tools]; fruit pickers [hand tools]; lawn clippers [hand instruments]; pruning knives; lawn clippers; syringes for spraying insecticides [implements]; scythe sharpeners; scythes; hoes [hand tools]; jigsaws; budding knives; apparatus for destroying plant parasites; grafting tools [hand tools]; rakes [implements]; saws (implements); pruning scissors; garden tools, hand-operated; garden rollers [hand-operated]; bill-hooks; sprayers [hand-operated tool] for garden use in spraying weedkillers; gardeners' knives; crumbling rakes; rakes; spades [hand tools]; shovels [hand tools]; hand-operated lawn edgers; hatchets; drill bits; drill braces; parts, components and accessories for the aforementioned goods. Class 35: Compilation and display of goods assortments (for others) to enable customers and users to get information about and buy goods via the internet, namely machines, machine tools and power tools, Stropping machines, Electric knives, Drilling machines, Drilling heads (parts of machines), Mandrels (parts of machines), Drill chucks (parts of machines), Drilling bits (parts of machines), Brushes (parts of machines), Brushes, electrically operated (parts of machines), Electric hammers, Scissors, electric, Electric screwdrivers, Electric nail removers, Electric saws, Machines and apparatus for cleaning [electric], Raking machines, Agricultural, gardening and landscaping tools, Hand tools and instruments (hand operated), Electrically operated hand guided tools; retail services relating to machines, machine tools and power tools, Stropping machines, Electric knives, Drilling machines, Drilling heads (parts of machines), Mandrels (parts of machines), Drill chucks (parts of machines), Drilling bits (parts of machines), Brushes (parts of machines), Brushes, electrically operated (parts of machines), Electric hammers, Scissors, electric, Electric screwdrivers, Electric nail removers, Electric saws, Machines and apparatus for cleaning [electric], Raking machines, Agricultural, gardening and landscaping tools, Hand tools and instruments (hand operated), Electrically operated hand guided tools.

2.

European Union trade mark application No 18 025 623 is rejected for all the above goods and services. It may proceed for the remaining contested and uncontested goods and services, namely: Class 7: Electric mixers for household purposes and kitchen machines, electric, included in the class; washing machines; spin driers; dishwashing machines; tin openers, electric; bread cutting machines; fruit presses, electric, for household purposes; coffee grinders, other than hand-operated; household assistants; food processors; food whisks (electric -); blenders; apparatus for aerating beverages; knitting machines; ironing machines; sewing machines; machines and apparatus for carpet shampooing, electric; ironing machines and pressing machines; mangles; electric stirrers; juice extracting machines; electric meat grinders; electric coffee grinders; electrical carpet cleaning [shampooing] appliances; brewing machines; door openers, hydraulic, pneumatic and electric; parquet polishers, electric; window openers, electric; shoe polishers, electric; filter presses; filtering machines; machines for sealing, refilling and cleaning bottles; electric, hydraulic or pneumatic window openers and window closers; electric, hydraulic or pneumatic door openers and door closers; compressors for refrigerators; steam traps; glue guns, electric; wrapping machines and sealing machines; air condensers; machines and apparatus for polishing [electric]; riveting machines; machines for making pasta; pedal drives for sewing machines; pepper mills, other than hand-operated; 3d printing pens; 3d printers; grating machines for vegetables; rotary steam presses, portable, for fabrics; snow ploughs; spray guns for paint; punching machines; stamping machines; steam engines; parts, components and accessories for the aforementioned goods. Class 8: Cutlery; hair braiders, electric; manicure sets, electric; electric hair clippers; beard clippers, electric; depilation appliances, electric and non-electric; nail clippers, electric; nail files, electric; parts, components and accessories for the aforementioned goods. Class 9 (uncontested): All the goods. Class 11: All the goods. Class 21 (uncontested): All the goods. Class 35: Consumer information online; compilation, input and systematization of information in databases; customer information for online sales; online shopping information; on-line advertising on a computer network; advertising by mail order; demonstration of goods online; direct mail advertising; presentation of goods on communication media, for retail purposes; compilation and display of goods assortments (for others) to enable customers and users to get information about and buy goods via the internet, namely consumer electronics, goods for security and monitoring, small electrical consumer goods, namely Electric household and kitchen appliances, electrical can openers, Bread-cutting machines, Electric fruit squeezers for household purposes, Coffee grinders, other than hand operated, Household aids, Kitchen tools, Electric food whisks, Sound mixers, Aerated beverage making machines, Knitting machines, Ironing machines, Sewing machines, Machines and apparatus for carpet shampooing, electric, Ironing machines, Mangles, Electric stirrers, juicers, Meat choppers, Coffee grinders, Electric shampooing instruments, Brewing machines, Bread-cutting machines, Door openers, electric, Parquet wax-polishers, electric, Window openers, electric, electric shoe polishers, Machines for sealing, filling and cleaning of bottles, Door openers and door closers (electric), Electric window openers and window closers, Electric glue guns, Packaging and sealing machines, Aerocondensers, Mangles, Electric machines and apparatus for polishing, Riveting machines, Noodle machines, Pepper mills, other than hand-operated, Grating machines for vegetables, Portable rotary steam presses for fabrics, air brushes for applying colour, electric hair braiders, Electric manicure sets, electric hair clippers, beard clippers, electric, Electric depilators, electric nail clippers, Nail files (electric), Calculating machines, Time switches, automatic, Chargers for cells and batteries, Electronic adapters, igniting apparatus, electric, for igniting at a distance, Computer bulletin and message boards, Light-emitting electronic pointers, Remote control apparatus, Fluorescent screens, chargers for electronic cigarettes, Lasers, not for medical purposes, hand-held calculators, Electric appliances for household and kitchen purposes, coolers for wine, microwaves, Heating plates, Grilling machines, Frying apparatus, Egg cookers, Apparatus for fondue, Coffeemachines, electric, Electric coffee machines, Expresso makers, Hair dryers, Blowdryers, toasters and Sandwich makers, Waffle maker, Electric kettles, Heating apparatus and instruments, tanning apparatus (sun beds), Disinfectant apparatus, Hot water reservoirs, electric laundry dryers, foot warming apparatus, Ice-cream makers, Water heaters, Flares, Yoghurt machines, Boiling tops, Bottle coolers, Flat irons, Steamers, blenders, electric juice extractors, hand blenders, waffle irons, Kitchen scales, Curling tongs, Hot rollers, Hair straighteners, Hot brushes, Bathroom scales, Epilators, IPL hair removers, nose hair trimmers, Shavers and razors, Beard trimmers, electric toothbrushes, Couplings, electric and Electricity conduits (conduits), Electric lamps, white goods, Apparatus for lighting, Apparatus for heating, Apparatus for steam generating, Cooking apparatus, Apparatus for refrigerating, apparatus for drying, apparatus for ventilating, Apparatus for water supply and sanitary purposes, Clocks, Stationery, vacuum cleaners, Building materials, Furniture, Household or kitchen utensils and containers and consumer electronic devices, demonstration of goods on the internet; retail services relating to consumer electronics, goods for security and monitoring, small electrical consumer goods, namely Electric household and kitchen appliances, electrical can openers, Bread-cutting machines, Electric fruit squeezers for household purposes, Coffee grinders, other than hand operated, Household aids, Kitchen tools, Electric food whisks, Sound mixers, Aerated beverage making machines, Knitting machines, Ironing machines, Sewing machines, Machines and apparatus for carpet shampooing, electric, Ironing machines, Mangles, Electric stirrers, juicers, Meat choppers, Coffee grinders, Electric shampooing instruments, Brewing machines, Bread-cutting machines, Door openers, electric, Parquet wax-polishers, electric, Window openers, electric, electric shoe polishers, Machines for sealing, filling and cleaning of bottles, Door openers and door closers (electric), Electric window openers and window closers, Electric glue guns, Packaging and sealing machines, Aerocondensers, Mangles, Electric machines and apparatus for polishing, Riveting machines, Noodle machines, Pepper mills, other than hand-operated, Grating machines for vegetables, Portable rotary steam presses for fabrics, air brushes for applying colour, electric hair braiders, Electric manicure sets, electric hair clippers, beard clippers, electric, Electric depilators, electric nail clippers, Nail files (electric), Calculating machines, Time switches, automatic, Chargers for cells and batteries, Electronic adapters, igniting apparatus, electric, for igniting at a distance, Computer bulletin and message boards, Light-emitting electronic pointers, Remote control apparatus, Fluorescent screens, chargers for electronic cigarettes, Lasers, not for medical purposes, hand-held calculators, Electric appliances for household and kitchen purposes, coolers for wine, microwaves, Heating plates, Grilling machines, Frying apparatus, Egg cookers, Apparatus for fondue, Coffeemachines, electric, Electric coffee machines, Expresso makers, Hair dryers, Blowdryers, toasters and Sandwich makers, Waffle maker, Electric kettles, Heating apparatus and instruments, tanning apparatus (sun beds), Disinfectant apparatus, Hot water reservoirs, electric laundry dryers, foot warming apparatus, Ice-cream makers, Water heaters, Flares, Yoghurt machines, Boiling tops, Bottle coolers, Flat irons, Steamers, blenders, electric juice extractors, hand blenders, waffle irons, Kitchen scales, Curling tongs, Hot rollers, Hair straighteners, Hot brushes, Bathroom scales, Epilators, IPL hair removers, nose hair trimmers, Shavers and razors, Beard trimmers, electric toothbrushes, Couplings, electric and Electricity conduits (conduits), Electric lamps, white goods, Apparatus for lighting, Apparatus for heating, Apparatus for steam generating, Cooking apparatus, Apparatus for refrigerating, apparatus for drying, apparatus for ventilating, Apparatus for water supply and sanitary purposes, Clocks, Stationery, vacuum cleaners, Building materials, Furniture, Household or kitchen utensils and containers and consumer electronic devices. Class 37: All the services.

 

3.	Each party bears its own costs.

 

REASONS

 

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 025 623 ‘ELVITA’ (word mark), namely against all the goods and services in Classes 7, 8, 11, 35 and 37. The opposition is based on European Union trade mark registration No 14 204 697 ‘LEVITA’ (word mark) in relation to which the opponent invoked Article 8(1)(b) EUTMR. The opponent also invoked Article 8(4) EUTMR on the basis of a non-registered trade mark ‘LEVITA’ (word mark) used in the course of trade in the Czech Republic, EU and Slovakia for air-conditioning apparatus; portable air conditioners; filters for air conditioning.

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 and services

 

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

Class 7: Power driven hedge shears; electric wood saw machines; tree branch pruners (electric -); power-operated lawn aerators; hand saws (electrically operated -); electric chain saws; electric lawnmowers; gardening tools (electric -); gardening machines (powered -); clearing saws [machines]; rechargeable hedge cutters; tree branch cutters (electric -); hedge rimmers [machines]; clearing saws [machines]; pruning shears [other than hand operated]; pruning saws [electric]; hedge cutters [machines]; lawn edge rimmers [machines]; string trimmers [power lawn and garden tools].

 

The contested goods and services are the following:

 

Class 7: Machines and machine tools for household and gardening purposes, power operated tools; electric mixers for household purposes and kitchen machines, electric, included in the class; washing machines; spin driers; dishwashing machines; tin openers, electric; bread cutting machines; fruit presses, electric, for household purposes; coffee grinders, other than hand-operated; household assistants; food processors; food whisks (electric -); blenders; apparatus for aerating beverages; blades sharpening machines; knitting machines; ironing machines; sewing machines; machines and apparatus for carpet shampooing, electric; ironing machines and pressing machines; mangles; electric stirrers; knives, electric; juice extracting machines; electric meat grinders; electric coffee grinders; electrical carpet cleaning [shampooing] appliances; drilling machines; brewing machines; door openers, hydraulic, pneumatic and electric; parquet polishers, electric; power hammers; scissors, electric; window openers, electric; screwdrivers, electric; shoe polishers, electric; nail extractors, electric; power saws; filter presses; filtering machines; machines for sealing, refilling and cleaning bottles; mortising machines; milling machines; electric, hydraulic or pneumatic window openers and window closers; electric, hydraulic or pneumatic door openers and door closers; lawnmowers [machines]; straw [chaff] cutters; agricultural machines; compressors for refrigerators; steam traps; glue guns, electric; wrapping machines and sealing machines; air condensers; machines and apparatus for cleaning, electric; machines and apparatus for polishing [electric]; riveting machines; machines for making pasta; pedal drives for sewing machines; pepper mills, other than hand-operated; 3d printing pens; 3d printers; regulators [parts of machines]; grating machines for vegetables; rotary steam presses, portable, for fabrics; raking machines; rakes for raking machines; snow ploughs; spray guns for paint; punching machines; stamping machines; steam engines; parts, components and accessories for the aforementioned goods.

Class 8: Hand tools and hand implements (hand-operated); agricultural implements, garden tools and garden architect tools; cutlery; pruners [hand tools]; trowels [gardening]; sprayers for use in horticulture [hand tool]; tree pruners; hedge trimmers; insecticide vaporizers and spray bottles [hand tools]; fruit pickers [hand tools]; lawn clippers [hand instruments]; pruning knives; lawn clippers; syringes for spraying insecticides [implements]; scythe sharpeners; scythes; hoes [hand tools]; jigsaws; budding knives; apparatus for destroying plant parasites; grafting tools [hand tools]; rakes [implements]; saws (implements); pruning scissors; garden tools, hand-operated; garden rollers [hand-operated]; bill-hooks; sprayers [hand-operated tool] for garden use in spraying weedkillers; gardeners' knives; crumbling rakes; rakes; spades [hand tools]; shovels [hand tools]; hand-operated lawn edgers; hatchets; drill bits; drill braces; hair braiders, electric; manicure sets, electric; electric hair clippers; beard clippers, electric; depilation appliances, electric and non-electric; nail clippers, electric; nail files, electric; parts, components and accessories for the aforementioned goods.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; bath installations; bath tubs; lighting apparatus and installations; arc lamps; diffusers (light -); light bulbs, electric; heating filaments, electric; electric lamps; torches for lighting; floor lamps; lamp glasses; lamp housing; lamp globes; lamps; lamp reflectors; lamp shades; lampshade holders; lanterns for lighting; chandeliers; fairy lights for decoration; fluorescent lamps; magnesium filaments for lighting; tubes (discharge), electric, for lighting; sockets for electric lights; spotlights; safety lamps; hanging devices for lamps; household and kitchen electrical appliances; refrigerating cabinets; refrigerator/coolers; wine refrigerators; freezer cabinets; refrigerator/freezer; chest freezers; cooking stoves; microwave ovens [cooking apparatus]; gas ovens; electric ovens; hot plates; barbecue apparatus; frying apparatus; egg cookers; fondue apparatus; range hoods; sink units; electric coffee brewers; coffee machines, electric; espresso coffee machines; hair dryers; hairdryers; toasters; hot sandwich toasters; waffle irons; kettles, electric; heating apparatus and instruments; tanning apparatus [sun beds]; disinfectant apparatus; hot water reservoirs; electric clothes dryer; foot heating appliances; ice machines; water heaters; electric torches; air-conditioning installations and appliances; ventilating fans; air purifiers; humidifiers; dehumidifiers; humidifier; refrigerating machines; electric, coal-fired, briquette-fired, wood-fired and gas-fired barbecues; yogurt machines; ventilation unit; precipitators; heat pumps; dryers; parts, components and accessories for the aforementioned goods.

Class 35: Consumer information online; compilation, input and systematization of information in databases; compilation and display of goods assortments (for others) to enable customers and users to get information about and buy goods via the internet, namely consumer electronics, goods for security and monitoring, small electrical consumer goods, namely machines, machine tools and power tools, Electric household and kitchen appliances, electrical can openers, Bread-cutting machines, Electric fruit squeezers for household purposes, Coffee grinders, other than hand operated, Household aids, Kitchen tools, Electric food whisks, Sound mixers, Aerated beverage making machines, Stropping machines, Knitting machines, Ironing machines, Sewing machines, Machines and apparatus for carpet shampooing, electric, Ironing machines, Mangles, Electric stirrers, Electric knives, juicers, Meat choppers, Coffee grinders, Electric shampooing instruments, Drilling machines, Drilling heads (parts of machines), Mandrels (parts of machines), Drill chucks (parts of machines), Drilling bits (parts of machines), Brushes (parts of machines), Brushes, electrically operated (parts of machines), Brewing machines, Bread-cutting machines, Door openers, electric, Parquet wax-polishers, electric, Electric hammers, Scissors, electric, Window openers, electric, Electric screwdrivers, electric shoe polishers, Electric nail removers, Electric saws, Machines for sealing, filling and cleaning of bottles, Door openers and door closers (electric), Electric window openers and window closers, Electric glue guns, Packaging and sealing machines, Aerocondensers, Mangles, Machines and apparatus for cleaning [electric], Electric machines and apparatus for polishing, Riveting machines, Noodle machines, Pepper mills, other than hand-operated, Grating machines for vegetables, Portable rotary steam presses for fabrics, Raking machines, air brushes for applying colour, Agricultural, gardening and landscaping tools, electric hair braiders, Electric manicure sets, electric hair clippers, beard clippers, electric, Electric depilators, electric nail clippers, Nail files (electric), Calculating machines, Time switches, automatic, Chargers for cells and batteries, Electronic adapters, igniting apparatus, electric, for igniting at a distance, Computer bulletin and message boards, Light-emitting electronic pointers, Remote control apparatus, Fluorescent screens, chargers for electronic cigarettes, Lasers, not for medical purposes, hand-held calculators, Electric appliances for household and kitchen purposes, coolers for wine, microwaves, Heating plates, Grilling machines, Frying apparatus, Egg cookers, Apparatus for fondue, Coffeemachines, electric, Electric coffee machines, Expresso makers, Hair dryers, Blowdryers, toasters and Sandwich makers, Waffle maker, Electric kettles, Heating apparatus and instruments, tanning apparatus (sun beds), Disinfectant apparatus, Hot water reservoirs, electric laundry dryers, foot warming apparatus, Ice-cream makers, Water heaters, Flares, Yoghurt machines, Boiling tops, Bottle coolers, Flat irons, Steamers, blenders, electric juice extractors, hand blenders, waffle irons, Kitchen scales, Curling tongs, Hot rollers, Hair straighteners, Hot brushes, Bathroom scales, Epilators, IPL hair removers, nose hair trimmers, Shavers and razors, Beard trimmers, electric toothbrushes, Hand tools and instruments (hand operated), Electrically operated hand guided tools, Couplings, electric and Electricity conduits (conduits), Electric lamps, white goods, Apparatus for lighting, Apparatus for heating, Apparatus for steam generating, Cooking apparatus, Apparatus for refrigerating, apparatus for drying, apparatus for ventilating, Apparatus for water supply and sanitary purposes, Clocks, Stationery, vacuum cleaners, Building materials, Furniture, Household or kitchen utensils and containers and consumer electronic devices, demonstration of goods on the internet; retail services relating to consumer electronics, goods for security and monitoring, small electrical consumer goods, namely machines, machine tools and power tools, Electric household and kitchen appliances, electrical can openers, Bread-cutting machines, Electric fruit squeezers for household purposes, Coffee grinders, other than hand operated, Household aids, Kitchen tools, Electric food whisks, Sound mixers, Aerated beverage making machines, Stropping machines, Knitting machines, Ironing machines, Sewing machines, Machines and apparatus for carpet shampooing, electric, Ironing machines, Mangles, Electric stirrers, Electric knives, juicers, Meat choppers, Coffee grinders, Electric shampooing instruments, Drilling machines, Drilling heads (parts of machines), Mandrels (parts of machines), Drill chucks (parts of machines), Drilling bits (parts of machines), Brushes (parts of machines), Brushes, electrically operated (parts of machines), Brewing machines, Bread-cutting machines, Door openers, electric, Parquet wax-polishers, electric, Electric hammers, Scissors, electric, Window openers, electric, Electric screwdrivers, electric shoe polishers, Electric nail removers, Electric saws, Machines for sealing, filling and cleaning of bottles, Door openers and door closers (electric), Electric window openers and window closers, Electric glue guns, Packaging and sealing machines, Aerocondensers, Mangles, Machines and apparatus for cleaning [electric], Electric machines and apparatus for polishing, Riveting machines, Noodle machines, Pepper mills, other than hand-operated, Grating machines for vegetables, Portable rotary steam presses for fabrics, Raking machines, air brushes for applying colour, Agricultural, gardening and landscaping tools, electric hair braiders, Electric manicure sets, electric hair clippers, beard clippers, electric, Electric depilators, electric nail clippers, Nail files (electric), Calculating machines, Time switches, automatic, Chargers for cells and batteries, Electronic adapters, igniting apparatus, electric, for igniting at a distance, Computer bulletin and message boards, Light-emitting electronic pointers, Remote control apparatus, Fluorescent screens, chargers for electronic cigarettes, Lasers, not for medical purposes, hand-held calculators, Electric appliances for household and kitchen purposes, coolers for wine, microwaves, Heating plates, Grilling machines, Frying apparatus, Egg cookers, Apparatus for fondue, Coffeemachines, electric, Electric coffee machines, Expresso makers, Hair dryers, Blowdryers, toasters and Sandwich makers, Waffle maker, Electric kettles, Heating apparatus and instruments, tanning apparatus (sun beds), Disinfectant apparatus, Hot water reservoirs, electric laundry dryers, foot warming apparatus, Ice-cream makers, Water heaters, Flares, Yoghurt machines, Boiling tops, Bottle coolers, Flat irons, Steamers, blenders, electric juice extractors, hand blenders, waffle irons, Kitchen scales, Curling tongs, Hot rollers, Hair straighteners, Hot brushes, Bathroom scales, Epilators, IPL hair removers, nose hair trimmers, Shavers and razors, Beard trimmers, electric toothbrushes, Hand tools and instruments (hand operated), Electrically operated hand guided tools, Couplings, electric and Electricity conduits (conduits), Electric lamps, white goods, Apparatus for lighting, Apparatus for heating, Apparatus for steam generating, Cooking apparatus, Apparatus for refrigerating, apparatus for drying, apparatus for ventilating, Apparatus for water supply and sanitary purposes, Clocks, Stationery, vacuum cleaners, Building materials, Furniture, Household or kitchen utensils and containers and consumer electronic devices; customer information for online sales; online shopping information; on-line advertising on a computer network; advertising by mail order; demonstration of goods online; direct mail advertising; presentation of goods on communication media, for retail purposes.

Class 37: Repair / maintenance of kitchen fittings; laundry fittings; bathroom fittings, furniture, electronics; installation services for kitchens, laundries, bathrooms and electronics; installation of kitchen fittings; installation of bathroom fittings; installation of electronics; installation of home furnishings; services for the fitting of kitchens; fitting of doors of kitchen countertops, sinks, shelves and cabinets; mounting of electronics; installation, maintenance and repair of electrical equipment and electrical installations; installation, maintenance and repair services for electricity; installation, maintenance or repair of electrical wiring and sockets; installation, maintenance and repair of electrical equipment, electrical apparatus, electrical devices, electrical wiring, electrical systems and electric lights; installation, maintenance and repair of electrical wiring; advisory services and provision of information regarding the installation, maintenance and repair of electrical equipment; information on installation of bathrooms and kitchen fittings, kitchen and bathroom, electrical equipment as well as electrical wiring and electrical systems.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and/or services specifically listed.

 

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

 

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.

 

Contested goods in Class 7

The contested machines and machine tools for household and gardening purposes, power operated tools include, as a broader category, or overlap with, inter alia, the opponent’s electric chain saws; gardening machines (powered -); electric lawnmowers; gardening tools (electric-). 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 scissors, electric; power saws; lawnmowers [machines]; agricultural machines

are identical to the opponent’s gardening tools (electric -); gardening machines (powered -), either because the opponent’s goods include, are included in, or overlap with, the mentioned contested goods.

The contested parts, components and accessories for the following goods, namely: machines and machine tools for household and gardening purposes, power operated tools; scissors, electric; power saws; lawnmowers [machines]; agricultural machines are similar to the opponent’s electric chain saws; gardening machines (powered -); electric lawnmowers; gardening tools (electric-), as they usually coincide in producer, relevant public and distribution channels. Some of them may also be complementary. Likewise, the contested regulators [parts of machines]; parts, components and accessories for the aforementioned goods are similar to at least a low degree to the opponent’s gardening machines (powered -), as they can coincide in producer and/or relevant public. Furthermore, they can be complementary.

The contested blades sharpening machines; knives, electric; drilling machines; power hammers; screwdrivers, electric; nail extractors, electric; mortising machines; milling machines; straw [chaff] cutters; machines and apparatus for cleaning, electric; raking machines; rakes for raking machines; parts, components and accessories for the aforementioned goods are at least similar to a low degree to at least one of the following opponent’s goods hand saws (electrically operated -); electric chain saws; electric wood saw machines; gardening machines (powered -); gardening tools (electric -). This is because these sets of goods normally coincide in producers, distribution channels and/or relevant public. Some of them are also complementary.

The remaining contested electric mixers for household purposes and kitchen machines, electric, included in the class; washing machines; spin driers; dishwashing machines; tin openers, electric; bread cutting machines; fruit presses, electric, for household purposes; coffee grinders, other than hand-operated; household assistants; food processors; food whisks (electric -); blenders; apparatus for aerating beverages; knitting machines; ironing machines; sewing machines; machines and apparatus for carpet shampooing, electric; ironing machines and pressing machines; mangles; electric stirrers; juice extracting machines; electric meat grinders; electric coffee grinders; electrical carpet cleaning [shampooing] appliances; brewing machines; door openers, hydraulic, pneumatic and electric; parquet polishers, electric; window openers, electric; shoe polishers, electric; filter presses; filtering machines; machines for sealing, refilling and cleaning bottles; electric, hydraulic or pneumatic window openers and window closers; electric, hydraulic or pneumatic door openers and door closers; compressors for refrigerators; steam traps; glue guns, electric; wrapping machines and sealing machines; air condensers; machines and apparatus for polishing [electric]; riveting machines; machines for making pasta; pedal drives for sewing machines; pepper mills, other than hand-operated; 3D printing pens; 3D printers; grating machines for vegetables; rotary steam presses, portable, for fabrics; snow ploughs; spray guns for paint; punching machines; stamping machines; steam engines; parts, components and accessories for the aforementioned goods are not similar to the opponent’s goods. The opponent’s goods are products, such as saws, agricultural and garden tools, whereas the mentioned contested goods cover various kitchen equipment and implements, specific household goods or specific-use goods and machinery, such as door openers, filtering machines, sealing machines, as well as parts and accessories thereof. These sets of goods differ in their purpose and method of use; they are normally manufactured by different undertakings and require completely different expertise. Their trade channels are different and these goods are not in competition or complementary.

 

Contested goods in Class 8

 

The contested Hand tools and hand implements (hand-operated); agricultural implements, garden tools and garden architect tools; pruners [hand tools]; trowels [gardening]; sprayers for use in horticulture [hand tool]; tree pruners; hedge trimmers; insecticide vaporizers and spray bottles [hand tools]; fruit pickers [hand tools]; lawn clippers [hand instruments]; pruning knives; lawn clippers; syringes for spraying insecticides [implements]; scythe sharpeners; scythes; hoes [hand tools]; jigsaws; budding knives; apparatus for destroying plant parasites; grafting tools [hand tools]; rakes [implements]; saws (implements); pruning scissors; garden tools, hand-operated; garden rollers [hand-operated]; bill-hooks; sprayers [hand-operated tool] for garden use in spraying weedkillers; gardeners' knives; crumbling rakes; rakes; spades [hand tools]; shovels [hand tools]; hand-operated lawn edgers; hatchets; drill bits; drill braces; parts, components and accessories for the aforementioned goods are similar to at least a low degree to at least one of the following opponent’s goods: gardening tools (electric -); electric lawnmowers; gardening machines (powered -); hand saws (electrically operated -); electric chain saws. This is because the mentioned sets of goods can coincide in their purpose (used as tools and implements in the field of gardening, agriculture and/or as DIY implements and tools). In addition, they usually coincide in at least relevant public and distribution channels. Furthermore, at least some of them can be in competition and some of them can be complementary.

However, the contested cutlery; hair braiders, electric; manicure sets, electric; electric hair clippers; beard clippers, electric; depilation appliances, electric and non-electric; nail clippers, electric; nail files, electric; parts, components and accessories for the aforementioned goods have no relevant link with the opponent’s goods. These goods differ in nature, method of use and purpose. They are directed at different relevant public and their distribution channels are quite distinct. In addition, they have different producers and are nether in competition, nor complementary. Therefore, they are dissimilar.

Contested goods in Class 11

 

The contested goods in class 11 are various lighting, heating, steam generating, cooking, refrigerating, drying and ventilating devices, apparatus for water supply and sanitary purposes and parts, components and accessories thereof. They are dissimilar to all the opponent’s goods, which are related to other fields and mostly to the field of agricultural, garden tools and/or similar cutting tools and machines. The goods under comparison are all of a different nature. They have different purposes, method of use and distribution channels. The contested goods are not in competition or complementary to the opponent’s goods and their producers are also usually different.

Contested services in Class 35

According to the practice of the Opposition Division, retail services concerning the sale of specific goods are considered similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Furthermore, a low degree of similarity is found between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

Also, a low degree of similarity between the goods sold at retail and the other goods may be sufficient to find a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumers.

 

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as compilation and display of goods assortments (for others) to enable customers and users to get information about and buy goods via the internet in Class 35.

In the present case, bearing in mind the afore-mentioned practice, the following contested retail and compilation and display of goods assortments (for others) to enable customers and users to get information about and buy goods via the internet services are considered similar to at least a low degree to the respective opponent’s goods in Class 7, namely: compilation and display of goods assortments (for others) to enable customers and users to get information about and buy goods via the internet, namely machines, machine tools and power tools, Stropping machines, Electric knives, Drilling machines, Drilling heads (parts of machines), Mandrels (parts of machines), Drill chucks (parts of machines), Drilling bits (parts of machines), Brushes (parts of machines), Brushes, electrically operated (parts of machines), Electric hammers, Scissors, electric, Electric screwdrivers, Electric nail removers, Electric saws, Machines and apparatus for cleaning [electric], Raking machines, Agricultural, gardening and landscaping tools, Hand tools and instruments (hand operated), Electrically operated hand guided tools; retail services relating to machines, machine tools and power tools, Stropping machines, Electric knives, Drilling machines, Drilling heads (parts of machines), Mandrels (parts of machines), Drill chucks (parts of machines), Drilling bits (parts of machines), Brushes (parts of machines), Brushes, electrically operated (parts of machines), Electric hammers, Scissors, electric, Electric screwdrivers, Electric nail removers, Electric saws, Machines and apparatus for cleaning [electric], Raking machines, Agricultural, gardening and landscaping tools, Hand tools and instruments (hand operated), Electrically operated hand guided tools.

The mentioned retail services of the specific goods and the goods covered by the opponent’s mark are closely connected from the consumers’ perspective, e.g. they can belong to the same market sector related to gardening, agriculture and machine tools and instruments, it is customary practice to market such goods together, they are commonly sold in the same specialised shops or in the same sections of department stores. Therefore, the mentioned contested services are similar to at least a low degree to the respective opponent’s goods.

However, the aforementioned principles do not apply in relation to the remaining contested services. In particular, the following below-listed contested retail services and the opponent’s goods in Class 7 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary. Therefore, the below-listed contested services are dissimilar to the opponent’s goods:

compilation and display of goods assortments (for others) to enable customers and users to get information about and buy goods via the internet, namely consumer electronics, goods for security and monitoring, small electrical consumer goods, namely Electric household and kitchen appliances, electrical can openers, Bread-cutting machines, Electric fruit squeezers for household purposes, Coffee grinders, other than hand operated, Household aids, Kitchen tools, Electric food whisks, Sound mixers, Aerated beverage making machines, Knitting machines, Ironing machines, Sewing machines, Machines and apparatus for carpet shampooing, electric, Ironing machines, Mangles, Electric stirrers, juicers, Meat choppers, Coffee grinders, Electric shampooing instruments, Brewing machines, Bread-cutting machines, Door openers, electric, Parquet wax-polishers, electric, Window openers, electric, electric shoe polishers, Machines for sealing, filling and cleaning of bottles, Door openers and door closers (electric), Electric window openers and window closers, Electric glue guns, Packaging and sealing machines, Aerocondensers, Mangles, Electric machines and apparatus for polishing, Riveting machines, Noodle machines, Pepper mills, other than hand-operated, Grating machines for vegetables, Portable rotary steam presses for fabrics, air brushes for applying colour, electric hair braiders, Electric manicure sets, electric hair clippers, beard clippers, electric, Electric depilators, electric nail clippers, Nail files (electric), Calculating machines, Time switches, automatic, Chargers for cells and batteries, Electronic adapters, igniting apparatus, electric, for igniting at a distance, Computer bulletin and message boards, Light-emitting electronic pointers, Remote control apparatus, Fluorescent screens, chargers for electronic cigarettes, Lasers, not for medical purposes, hand-held calculators, Electric appliances for household and kitchen purposes, coolers for wine, microwaves, Heating plates, Grilling machines, Frying apparatus, Egg cookers, Apparatus for fondue, Coffeemachines, electric, Electric coffee machines, Expresso makers, Hair dryers, Blowdryers, toasters and Sandwich makers, Waffle maker, Electric kettles, Heating apparatus and instruments, tanning apparatus (sun beds), Disinfectant apparatus, Hot water reservoirs, electric laundry dryers, foot warming apparatus, Ice-cream makers, Water heaters, Flares, Yoghurt machines, Boiling tops, Bottle coolers, Flat irons, Steamers, blenders, electric juice extractors, hand blenders, waffle irons, Kitchen scales, Curling tongs, Hot rollers, Hair straighteners, Hot brushes, Bathroom scales, Epilators, IPL hair removers, nose hair trimmers, Shavers and razors, Beard trimmers, electric toothbrushes, Couplings, electric and Electricity conduits (conduits), Electric lamps, white goods, Apparatus for lighting, Apparatus for heating, Apparatus for steam generating, Cooking apparatus, Apparatus for refrigerating, apparatus for drying, apparatus for ventilating, Apparatus for water supply and sanitary purposes, Clocks, Stationery, vacuum cleaners, Building materials, Furniture, Household or kitchen utensils and containers and consumer electronic devices; retail services relating to consumer electronics, goods for security and monitoring, small electrical consumer goods, namely Electric household and kitchen appliances, electrical can openers, Bread-cutting machines, Electric fruit squeezers for household purposes, Coffee grinders, other than hand operated, Household aids, Kitchen tools, Electric food whisks, Sound mixers, Aerated beverage making machines, Knitting machines, Ironing machines, Sewing machines, Machines and apparatus for carpet shampooing, electric, Ironing machines, Mangles, Electric stirrers, juicers, Meat choppers, Coffee grinders, Electric shampooing instruments, Brewing machines, Bread-cutting machines, Door openers, electric, Parquet wax-polishers, electric, Window openers, electric, electric shoe polishers, Machines for sealing, filling and cleaning of bottles, Door openers and door closers (electric), Electric window openers and window closers, Electric glue guns, Packaging and sealing machines, Aerocondensers, Mangles, Electric machines and apparatus for polishing, Riveting machines, Noodle machines, Pepper mills, other than hand-operated, Grating machines for vegetables, Portable rotary steam presses for fabrics, air brushes for applying colour, electric hair braiders, Electric manicure sets, electric hair clippers, beard clippers, electric, Electric depilators, electric nail clippers, Nail files (electric), Calculating machines, Time switches, automatic, Chargers for cells and batteries, Electronic adapters, igniting apparatus, electric, for igniting at a distance, Computer bulletin and message boards, Light-emitting electronic pointers, Remote control apparatus, Fluorescent screens, chargers for electronic cigarettes, Lasers, not for medical purposes, hand-held calculators, Electric appliances for household and kitchen purposes, coolers for wine, microwaves, Heating plates, Grilling machines, Frying apparatus, Egg cookers, Apparatus for fondue, Coffeemachines, electric, Electric coffee machines, Expresso makers, Hair dryers, Blowdryers, toasters and Sandwich makers, Waffle maker, Electric kettles, Heating apparatus and instruments, tanning apparatus (sun beds), Disinfectant apparatus, Hot water reservoirs, electric laundry dryers, foot warming apparatus, Ice-cream makers, Water heaters, Flares, Yoghurt machines, Boiling tops, Bottle coolers, Flat irons, Steamers, blenders, electric juice extractors, hand blenders, waffle irons, Kitchen scales, Curling tongs, Hot rollers, Hair straighteners, Hot brushes, Bathroom scales, Epilators, IPL hair removers, nose hair trimmers, Shavers and razors, Beard trimmers, electric toothbrushes, Couplings, electric and Electricity conduits (conduits), Electric lamps, white goods, Apparatus for lighting, Apparatus for heating, Apparatus for steam generating, Cooking apparatus, Apparatus for refrigerating, apparatus for drying, apparatus for ventilating, Apparatus for water supply and sanitary purposes, Clocks, Stationery, vacuum cleaners, Building materials, Furniture, Household or kitchen utensils and containers and consumer electronic devices.

Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. Here these conditions are not fulfilled, since the majority, if not all, the goods sold at retail are dissimilar to the other goods. Furthermore, the goods concerned are not sold in the same specialist shops, or the same sections of department stores or supermarkets. Admittedly, like most goods, they can now be found in large retail stores. However, in such outlets the goods at issue are sold in specialist departments which, even though they may be close, are nonetheless separate. In such circumstances, the distribution channels of the goods and services cannot be considered to be the same (04/12/2019, T‑524/18, Billa / BILLABONG et al., EU:T:2019:838, § 51).

The remaining contested services, namely Consumer information online; compilation, input and systematization of information in databases; customer information for online sales; online shopping information; on-line advertising on a computer network; advertising by mail order; demonstration of goods on the internet; demonstration of goods online; direct mail advertising; presentation of goods on communication media, for retail purposes are dissimilar to the opponent’s goods in Class 7. Apart from being different in nature, since services are intangible whereas goods are tangible, they sets of goods and services differ in their purpose, method of use, relevant public and distribution channels. They are neither in competition nor complementary.

Contested services in Class 37

The contested services in this class include repair, maintenance and installation of various goods and information thereof. These services are dissimilar to the opponent’s goods in Class 7. In the present case, it is not common in the relevant market sector for the manufacturer of the particular goods in Class 7 to also provide any of the contested services relating to entirely different fields (e.g. furniture, electronics, electrical equipment, electrical wiring, electrical systems and electric lights, etc.). Apart from being different in nature, the mentioned goods and services differ in relevant public, distribution channels and usual producers/providers. They are not in competition or complementary to each other either.

 

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 and services found to be identical or similar to different degrees are directed both 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 and price of the goods/services, the frequency of purchase, or terms and conditions of the goods and services purchased.

 

Given that the general public is more prone to confusion, the examination will proceed on this basis.

 

c) The signs

LEVITA	ELVITA
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

The verbal elements of the signs are not meaningful in a number of the relevant languages. In the present case, for reasons of procedural economy, and in order to avoid a lengthy examination with a number of different languages, pronunciations and conclusions, the Opposition Division finds it appropriate to focus the comparison of the signs on the Swedish- and Czech-speaking part of the relevant public, wherein none of the signs has a meaning.

Both marks are word marks consisting of six letters. As already mentioned above, the words included in the signs have no meaning for the examined relevant public. Therefore, the inherent distinctive character of the earlier mark is normal.

Visually and aurally, the signs coincide in that they are word signs composed of the same letters. Four out of these six letters, namely ‘VITA’, are also in the same order. Therefore, the only difference results from the inversion of the letters ‘E’ and ‘L’. The signs are consequently visually and aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the 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 its 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, as mentioned above, 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

 

The contested goods and services are partly identical and similar to various degrees and partly dissimilar to the opponent’s goods. The relevant examined public is the public at large and the degree of attention may vary from average to high. The earlier mark has a normal degree of inherent distinctiveness.

The signs are visually and aurally similar to at least an average degree and the conceptual aspect does not influence the assessment of the similarity of the signs.

Both signs share the sequence of letters ‘VITA’ and the letters ‘E’ and ‘L’, albeit these two letters are in a different order. It should be borne in mind that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Although consumers generally pay greater attention to the beginning of a word sign than to the end (25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30), this general rule does not prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the marks must take account of the overall impression produced by those marks, since the average consumer normally perceives a mark as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 52; 15/07/2015, R 3080/2014‑2, KOPPARBRIGHT / ParBright, § 54). In the present case, it is considered that the difference in the verbal elements of the signs, deriving from the reversed order of only two letters, is not enough to counteract the similarity between them and to safely exclude the likelihood of confusion between the signs.

Furthermore, 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).

In its observations, the applicant argues that the opponent has not substantiated its earlier rights or submitted any further material or documentation at all, apart from the original Notice of opposition, without any annexes. In this regard, it is noted that as regards the opponent’s EUTM No 14 204 697 ‘LEVITA’ in relation to which Article 8(1)(b) EUTMR was invoked, the opponent does not have to submit any documents as far as the existence and validity of the EUTM is concerned. The examination of the substantiation of EUTMs is done ex officio with respect to the data contained in the Office’s (EUIPO’s) database and in the present case the mentioned earlier right is deemed substantiated.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Swedish and Czech-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 14 204 697. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade mark. Although some of the goods and services may be similar only to a low degree, the opposition is also successful for them on account of the interdependence principle and the degree of similarity between the marks.

 

The rest of the contested goods and services 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 and services cannot be successful.

The examination will now proceed on the basis of the ground of Article 8(4) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

 

In the present case, the opponent invoked Article 8(4) EUTMR in relation to a non-registered trade mark ‘LEVITA’ (word mark) used in the course of trade in the Czech Republic, EU and Slovakia for air-conditioning apparatus; portable air conditioners; filters for air conditioning.

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:

 

(a)   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;

 

(b)   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) Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

 

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

 

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

 

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

 

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

 

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 12/08/2019 the opponent was given two months (until 17/12/2019), commencing after the end of the cooling-off period, to submit the abovementioned material. At the request of the opponent this time limit was extended until 17/02/2020. Following a refusal of a second extension of the time limit, the Office granted, for reasons of equity, an additional time limit of six days. The time limit expired on 26/02/2020.

 

The opponent submitted some evidence (Attachments 1-14, total of 14 pages) on 18/09/2020, that is, after the expiry of the abovementioned time limit.

According to Article 7(5) EUTMDR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office.

 

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence, or where the evidence submitted is manifestly irrelevant or manifestly insufficient to meet the requirements of laid down in Article 7(2) EUTMDR, the opposition will be rejected as unfounded.

 

Article 8(1) EUTMDR is an essentially procedural provision and it is apparent from the wording of that provision that when no evidence showing use of the earlier sign in the course of trade is submitted within the time limit set by the Office, the opposition must be rejected as unfounded. It follows that the Office cannot take into account evidence submitted for the first time after the expiry of the time limit.

 

It is true that pursuant to Article 8(5) EUTMDR the Office must exercise its discretion under Article 95(2) EUTMR and decide whether or not to accept belated facts or evidence of substantiation. However, the use of the term ‘supplementing’ in the text of Article 8(5) EUTMDR points to the necessary existence of a previous relevant submission within the time limit set by the Office, i.e. that it is not entirely new. It follows that no discretionary power is available, if no facts or evidence of substantiation were submitted within the relevant time limit.

 

Given that the abovementioned evidence cannot be taken into account, the opponent failed to establish use in the course of trade of the sign on which the opposition is based.

 

Given that at least one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

The Opposition Division

 

 

Jakub MROZOWSKI

Liliya YORDANOVA

Gueorgui IVANOV

 

 

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.