Trade Mark Inter Partes Decision 0/505/18

O-505-18 TRADE MARKS ACT 1994 IN THE MATTER OF: TRADE MARK APPLICATION No. 3185077 BY VENOM PARTNERS LTD TO REGISTER THE FOLLOWING TRADE MARK IN CLASSES 25, 26 & 38: VENOM AND OPPOSITION THERETO (No. 408774) BY VTEC LIMITED Background and pleadings 1) On 12 September 2016, Venom Partners Ltd (‘the applicant’) applied to register the trade mark VENOM in the UK. It was accepted and published in the Trade Marks Journal on 16 December 2016 in respect of the following goods and services: Class 25: Clothing; footwear; headgear; swimwear; sportswear; leisurewear. Class 26: Lace; embroidery; ribbons; braid; buttons; hooks and eyes; pins; needles; artificial flowers. Class 38: Telecommunication services; communication services for the electronic transmission of voices; transmission of data; electronic transmission of images, photographs, graphic images and illustrations over a global computer network; transmission of data, audio, video and multimedia files; simulcasting broadcast television over global communication networks, the Internet and wireless networks; provision of telecommunication access to video and audio content provided via an online video-on-demand service; satellite communication services; telecommunications gateway services. 2) On 14 March 2017, VTEC Limited (‘the opponent’) opposed the trade mark on the basis of Sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994 (‘the Act’). This is on the basis of its earlier European Union (formerly Community) Trade Marks (EUTMs). Pertinent details of its EUTMs are listed below: Mark: Number: 9398454 Filing date: 23 September 2010 Date of entry in register: 6 March 2011 2 Goods1: Class 9: Protective helmets for combat sports. Class 25: Clothing for combat sports and martial arts; martial arts suits; shorts; kimonos; sports footwear, in particular for martial arts; T-shirts; Bermuda shorts; sweatshirts. Class 28: Protective sporting articles, namely boxing and freestyle-fighting gloves, shin guards, elbow guards, knee guards; protective paddings (parts of sports suits). Mark: Number: 11939493 Date of filing: 27 June 2013 Date of entry in register: 14 November 2013 Goods relied upon: Class 9: Eyeglass; Sunglasses; Protective goggles; Communications head sets; Protective helmets for combat sports. Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Walking sticks; Umbrella sticks; School bags; Leatherboard; Travelling trunks; Card cases [notecases]; Briefcases; Music cases; Bags; Backpacks; Handbags; Shopping bags; Wheeled shopping bags; Bags for climbers; Bags for campers; Beach bags; Bags for sports; Travelling bags; Pouches, of leather, for packaging; Garment bags for travel; Travelling sets [leatherware]; Valises. 1 The Form TM7 (‘Notice of opposition’) also seeks to rely upon various goods listed under class 26. However, the registration does not cover these goods and therefore they cannot be relied upon. 3 Class 24: Textiles and textile goods, not included in other classes; Bed covers; Table covers; Bed blankets; Bed covers of paper; Quilts; Pillow shams; Covers for cushions; Bath linen, except clothing; Bed linen; Household linen; Bed clothes; Plastic material [substitute for fabrics]; Textile material; Moleskin [fabric]; Travelling rugs [lap robes]; Fabric; Fabrics for textile use; Adhesive fabric for application by heat. Mark: Number: 15557408 Filing date: 17 June 2016 Date of entry in register: 15 November 2016 Services relied upon: Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Education or entertainment information; Sports club services; Sports and fitness; Physical fitness centres (Operation of -); Rental of sports grounds; Booking of sports facilities; Providing sports facilities; Information services relating to sport; Sports tuition, coaching and instruction; Provision of sporting club facilities; Providing of equipment and installations for sports training; Rental of sports equipment, except vehicles; Organization of competitions education or entertainment; Arranging and conducting of colloquiums, seminars, conferences or congresses; Exercise classes; Supervision of physical exercise; Provision of health club [physical exercise] facilities; Provision of information relating to physical exercises via an online web site; Workshops (Arranging and conducting of -) [training]; Organisation of exhibitions for sporting, educational or cultural purposes; Club services (entertainment or education); Organisation and conducting of training camps, sporting and cultural training courses; Organisation of sports competitions and events; Publication of texts, other than publicity texts, including electronic 4 publication; Providing on-line electronic publications, not downloadable; Coaching [training]; Instruction in weight training; Gymnasium services relating to weight training; Publication of books; Library services; Tuition; Videotape production; Rental of motion pictures; Rental of sound recordings; Rental of video tape recorders/players or radio and television sets; Rental of stage scenery; Videotape editing; Photography; Booking of seats for shows; Game services provided on-line from a computer network; Gaming; Publication of electronic books and journals on-line; Electronic desktop publishing; Information, assistance and consultancy in connection with all the aforesaid services. Section 5(2)(b) claim 3) The opponent claims that its mark (which is the same for each of the registrations) is ‘visually highly similar, aurally identical and conceptually identical or highly similar’ to the application. It also claims that all of the relied upon goods and services are either identical, highly similar or similar. 4) For its section 5(2)(b) claim the opponent relies upon all three earlier registrations. It relies upon particular goods and services from each earlier registration against particular goods and services of the application. These are, 1) all of the goods covered by EUTM 9398454 against classes 25 and 26 of the application, 2) all of its class 9 goods and some of its classes 18 and 24 goods of EUTM 11939493 to oppose classes 25 and 26 of the application, and 3) it relies on some of the class 41 services of EUTM 15557408 to oppose class 38 of the application. Section 5(3) claim 5) In relation to the section 5(3) claim the opponent only relies upon all of the goods covered by its EUTM 9398454, which it claims has a reputation. The opponent argues that the applicant will unfairly benefit from the opponent’s investment in advertising which will lead to an unfair advantage. Further, it claims that the applicant will ride on its coat tails and will benefit from the power of attraction, reputation and prestige of the earlier mark. The opponent also claims that the later use will be out of its control and 5 that inferior/poor quality goods will cause detriment to its valuable reputation and business. It claims that use of the later mark will dilute the distinctive character and reputation of its marks. 6) The section 5(3) claim is against all of the applied for goods and services. Section 5(4)(a) claim 7) Turning to the section 5(4)(a) claim, the opponent argues it has an earlier unregistered right in VENUM. It claims to have been selling goods (see paragraph 83) under this sign since November 2006 throughout the UK and has acquired goodwill under the sign. Therefore, use of the trade mark applied for would cause a misrepresentation to the public and result in damage to the aforementioned goodwill. The section 5(4)(a) claim is against all of the applied for goods and services. 8) The applicant filed a counterstatement denying the claims made. It also filed lengthy written submissions which shall not be summarised here but I shall keep them in mind. The opponent also requested that the opponent provides proof of use of its earlier EUTM 9398454 for all of the goods that it is registered for. 9) Only the opponent filed evidence in these proceedings. This will be summarised to the extent that it is considered appropriate/necessary. 10) The opponent filed written submissions which will not be summarised but will be referred to as and where appropriate during this decision. No hearing was requested and so this decision is taken following careful consideration of the papers. DECISION 11) I shall begin the begin the decision with an assessment of the section 5(2)(b) of the Act. The relevant section reads: “5(2) A trade mark shall not be registered if because- 6 (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark”. 12) An earlier trade mark is defined in section 6(1) of the Act, which states: “6.-(1) In this Act an “earlier trade mark” means – (a) a registered trade mark, international trade mark (UK) or Community trade mark or international trade mark (EC) which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks. 13) The relevant sections of the Act read as follows: “Raising of relative grounds in opposition proceedings in case of non-use 6A. - (1) This section applies where - (a) an application

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