OPPOSITION No B 3 104 987

Toyo Industrial Co., Ltd, 3-7, Suminoe 2-chome Suminoe-ku, 559-0004 Osaka, Japan (opponent), represented by Wilson Gunn, 5^th Floor Blackfriars House The Parsonage, Manchester, M3 2JA, United Kingdom (professional representative)

a g a i n s t

Hebei Kunda Hoisting Equipment Co., Ltd., Zhang Village, Shimenqiao Town, Renqiu Hebei, People’s Republic of China (applicant), represented by Ingenias, Av. Diagonal 514 – 1º, 08006 Barcelona, Spain (professional representative).

On 14/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 104 987 is partially upheld, namely for the following contested goods:

Class 12: Cutting tools [hand tools]; spanners [hand tools]; blade sharpening instruments; tongs; pliers; bits [parts of hand tools]; augers [hand tools]; hand tools, hand-operated; screwdrivers.

2. European Union trade mark application No 18 093 208 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 093 208 for the figurative mark , namely against all the goods in Class 8. The opposition is based on European Union trade mark registration No 10 208 015 for the word mark ‘TOYO’. The opponent invoked Article 8(1)(a) and (b), and Article 8(5) EUTMR.

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

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

Class 8: Glass cutting tools; replacement parts and fittings for the aforesaid goods.

The contested goods are the following:

Class 8: Cutting tools [hand tools]; lifting jacks, hand-operated; spanners [hand tools]; blade sharpening instruments; tongs; pliers; bits [parts of hand tools]; augers [hand tools]; hand tools, hand-operated; screwdrivers.

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.

The contested cutting tools [hand tools]; hand tools, hand-operated include, as broader categories, or overlap with, the opponent’s glass cutting tools. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested blade sharpening instruments can be used to sharpen the blades of the opponent’s glass cutting tools. These goods target the same consumers who expect them to be offered by the same business entity. They share the same distribution channels and are complementary. These goods are similar to a high degree.

The contested spanners [hand tools]; tongs; pliers; bits [parts of hand tools]; augers [hand tools]; screwdrivers have some degree of similarity to the opponent’s glass cutting tools. These goods may target the same public and may be available through the same purchasing channels (such as hardware stores and do-it-yourself stores). Furthermore, it cannot be excluded that these goods are produced by the same manufacturers. They are at least similar to a low degree.

The remaining contested goods, namely lifting jacks, hand-operated are dissimilar to the opponent’s goods. Although the end consumers or the distribution channels could coincide, this is insufficient to justify a finding of similarity. The goods in conflict are not usually sold close to each other in the same department store and rarely coincide in producers. Moreover, they are neither complementary nor in competition.

b) The signs

TOYO
Earlier trade mark	Contested sign

The Opposition Division must bear in mind that the EUTM application should be considered identical to the earlier trade mark ‘where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer’ (20/03/2003, C‑291/00, Arthur et Félicie, EU:C:2003:169, § 50-54).

Insignificant differences are those which, because they concern elements that are very small or are lost within a complex mark, cannot be readily detected by the human eye upon observing the trade mark concerned, bearing in mind that the average consumer does not normally indulge in an analytical examination of a trade mark but perceives it in its entirety.

Although the contested sign is introduced as a figurative mark, it merely features a bold font without any other figurative elements or stylisation. As a registered word mark, the earlier mark may be depicted in any graphical manner, in upper- or lower-case letters and in various typefaces, including in bold font as in the contested sign. Therefore, the contested sign’s bold font is an insignificant detail of its overall graphical depiction.

Therefore, the signs are identical.

c) Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods, as established above in section a) are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods.

Furthermore, some contested goods, as established above in section a) were found to be similar (to varying degrees) to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods.

The rest of the contested goods are dissimilar. As the 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 cannot be successful.

The opposition will now proceed on the basis of Article 8(5) EUTMR, in relation to the goods found to be dissimilar above, and for which the opposition has been rejected based on Article 8(1)(a) and (b) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 09/07/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 8: Glass cutting tools; replacement parts and fittings for the aforesaid goods.

The opposition is directed against the following goods:

Class 8: Lifting jacks, hand-operated.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 18/05/2020 the opponent submitted the following evidence:

 Annexure TY002: four printouts in English (using WayBack Machine), showing the website http://www.toyo-jp.com/en/index_en.htm on the following dates 29/03/2015, 16/01/2016, 13/08/2017 and 26/10/2019. The sign ‘TOYO’ appears in relation to glass cutting tools.

 Annexure TY003: three printouts from the website of the opponent’s main distributor in the European Union, CR Laurence of Europe GmbH (CRL). Two of the printouts, one in German and one in English, showed the relevant goods, namely glass cutting tools and their replacement parts branded ‘TOYO’. These were undated but the opponent claimed they were from 2020.

 Annexure TY004: five CRL catalogues for several countries in the European Union showing the relevant goods, namely glass cutting tools, branded ‘TOYO’. These were from France (2012), Germany (2018), the United Kingdom (2016 and 2018) and one undated catalogue in English showing locations in Denmark, France, Germany and the United Kingdom.

 Annexure TY005: several undated printouts (the opponent stated they were from 2020) of different webpages showing the availability of the relevant goods, namely glass cutting tools and their replacement parts, branded ‘TOYO’, to be purchased online via Amazon and Ebay, as well as via two specific websites in the glass market in the United Kingdom.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Despite showing some use of the trade mark, the evidence provides no information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. The opponent could have filed more supporting documentation, for example, declarations made by independent parties attesting to the reputation of the mark, verified or verifiable data as to the market share held, opinion polls and market surveys, certifications and awards, and other commercial documents, audits and inspections. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

Moreover, the opponent did not provide any facts, arguments or evidence that could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

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

The Opposition Division

Cristina SENERIO LLOVET

Sofia SACRISTAN MARTINEZ

Maria SLAVOVA

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.