Newsletter No. 54

I Oppositions

Decision No. 2179-o

Earlier trademarks

INTUIT DOME

INTUIT

Opposed trademark

Opposition to registration of the trademark „intuit BY SOFTREND + device“.

The Board finds that the applicant’s doubts regarding the actual use of the opponent’s trademarks are irrelevant, as the deadline for proving use had not yet expired at the time the opposition was filed. Therefore, the assessment must rely on the lists of goods and services registered, and all three of the opponent’s trademarks must be regarded as valid earlier trademarks.

The Board considers that when retail or wholesale services are provided in relation to specific goods, those services may be considered similar to the corresponding goods. According to the case law of the Court of Justice of the European Union, such cases involve a close functional connection between goods and services, as the goods are essential for the provision of retail or wholesale services, and the two complement each other. On that basis, the Board concludes that the applicant’s class 35 sales services are similar to the opponent’s class 20 goods.

The Board finds that the applicant’s class 42 interior design and office space planning services are identical or similar to the opponent’s earlier design and interior design services, as they fall within the same general category or complement each other. Likewise, the applicant’s assessment and consultancy services are similar or identical to the design and interior design consultancy services covered by the opponent’s trademark.

The Board takes the view that the trademarks are, as a whole, visually and phonetically of average similarity, conceptually incomparable or potentially slightly similar, and overall, of average similarity. Importantly, the dominant and first-position word element in the applicant’s trademark is identical to the dominant first-position word element “INTUIT” in the earlier mark.

Considering the similarities between the goods and services covered by the parties’ trademarks, as well as the similarities between the trademarks themselves, the Board considers that there is a likelihood of confusion between the applicant’s and the opponent’s trademarks.

The opposition was sustained.

Decision No. 2261-o

Earlier trademark

KOOKON

Opposed trademark

Opposition to registration of the trademark „COCOON + device“.

The Board finds that the applicant has unjustifiably limited the comparison of goods and services covered by the trademarks to a narrow segment, even though both the applicant’s and the opponent’s trademarks cover a significantly wider range. The assessment must be based on the lists of goods and services recorded in the trademarks.

The applicant’s argument that, although the “COCOON” club has been open for almost a year, there has not been a single instance of confusion with the “Kookon” trademark, is not relevant. The actual use of the trademarks may not have taken place for all goods or services listed in the registry, in which case no point of contact arises between identical or similar goods or services. Moreover, the fact that the company has not received information about confusion between the marks does not mean that consumers have not actually been misled.

The Board considers that the opponent’s services in classes 41, 42, and 43 are identical or similar to the applicant’s services in classes 41, 43, and 45.

The Board finds that, although the applicant’s trademark contains a design element and color, its dominant part remains the word element “COCOON,” which is visually very similar to the opponent’s word mark “KOOKON”. Despite variations in pronunciation, the overall phonetic impression remains similar for consumers, and the identical meanings of the words “kookon” and “cocoon” reinforce the semantic overlap. Consequently, the Board concludes that the trademarks, as a whole, are at least of average similarity.

Considering that consumers’ level of attention when using the services at issue is not high and that consumers generally cannot directly compare trademarks side by side, the Board views that there is a likelihood of confusion, including association, between the trademarks.

The opposition was sustained.

Decision No. 2261-o

Earlier trademark

Audi

Applicant’s trademark

The opponent considers that the applicant’s trademark “Audi Estonia + device“ is so similar that there is a likelihood of confusion with the opponent’s earlier marks “Audi”. In addition, the applicant’s goods in Classes 14 and 16 are identical to those covered by the opponent’s earlier marks.

The Patent Office forwarded the notice of filing of the opposition to the proprietor of the opposed trademark. The owner has not notified of any opposition to the application before the end of the agreement period; thus, the Board applies the accelerated procedure. Under these circumstances, the Board will, in the final proceedings, grant the application without giving reasons for its decision, in so far as it is not manifestly unfounded.

The opposition was sustained.

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