At IP CYPRUS we take pride in delivering exceptional representation to protect the intellectual property rights of our clients.
The recent decision by the EUIPO Opposition Division in Opposition No. B 3 199 931 reaffirms our commitment to excellence and our ability to achieve favorable outcomes in challenging cases. Here, we share the key aspects of the decision and the strategy that led to our client’s success.
Background of the Case
On 19 July 2023, our client, Hengshui Tuolan Trading Co., Ltd., filed an opposition against International Registration No. 1 722 659 ‘SILKY ROLLS’ (word mark) designating the European Union. The opposition was based on the earlier European Union trade mark registration No. 18 751 892 ‘SILKY ROLLS’ (word mark). The contested goods fell within Class 3, covering various cosmetic products. The opponent invoked Article 8(1)(a) and Article 8(1)(b) of the EUTMR, citing double identity and a likelihood of confusion.
The Decision
The EUIPO Opposition Division upheld the opposition in its entirety, refusing protection for International Registration No. 1 722 659 in the European Union. The holder, Dohae Co., Ltd., was ordered to bear the costs, fixed at EUR 620.
Key Findings
1. Double Identity — Article 8(1)(a) EUTMR
The earlier trade mark ‘SILKY ROLLS’ and the contested mark ‘SILKY ROLLS’ were found to be identical. Moreover, several goods in Class 3, including hair waving preparations, eyelash tint, and eyebrow cosmetics, were deemed identical. This created a direct conflict under Article 8(1)(a).
2. Likelihood of Confusion — Article 8(1)(b) EUTMR
Even where the goods were not identical, such as hair protection creams and cosmetic preparations for eyelashes, they were found to be highly similar or complementary to the opponent’s goods. The similarity of the marks and goods led the Opposition Division to conclude that consumers would likely believe the goods originated from the same undertaking or economically linked undertakings. This risk of confusion supported the upholding of the opposition under Article 8(1)(b).
Our Approach to the Case
Comprehensive Analysis of Goods
We meticulously compared the goods listed in the earlier and contested marks, emphasizing their identical nature or high degree of similarity. By demonstrating overlap in their purpose, distribution channels, and end users, we left no room for doubt regarding the conflict between the marks.
Highlighting the Identical Signs
The marks in question were identical in their entirety. We argued that this identity alone, combined with the overlap in goods, was sufficient to establish a likelihood of confusion among consumers.
Addressing the Distinctiveness Argument
While the distinctiveness of the earlier mark was not explicitly assessed, we prepared robust arguments to counter any potential claims of low distinctiveness. This readiness ensured that our case remained strong under all possible scenarios.
Conclusion and Implications
This decision underscores the importance of vigilance in protecting intellectual property rights. It also highlights the need for a strategic approach in opposition proceedings, particularly where identical marks and overlapping goods are involved. By securing a complete refusal of the contested mark, we ensured that our client’s trade mark rights remain uncompromised.
At IP CYPRUS we are proud to have successfully defended our client’s interests. This case serves as a testament to our expertise and dedication in the field of intellectual property law.
For any assistance with trade mark opposition or related matters, please feel free to contact us. Together, we can safeguard your brand and its value.
