EUIPO Board Of Appeal Showed There Was No Smoke Without Fire In Fully Reversing Opposition Division Decision

• Published date: 04 June 2020
• Author: Ms Alexandra Nott
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Dehns

A recent ruling by the EUIPO First Board of Appeal in Walter Kidde Portable Equipment, Inc. v UAB Fire Experts (R0780/2019-1, [2020]), in which Dehns acted for the Appellant, saw a total overturning of the earlier Opposition Division decision. Whilst the Opposition Division determined abruptly and definitively that there was no similarity between the goods at issue, rejecting the opposition in just two pages, the Board annulled this first instance decision and instead refused the contested application in full.

Background

UAB Fire Experts ('UAB') sought to register the stylised mark containing the verbal element 'FireX' (pictured right) for the following goods:

• Class 2: Coatings; dyes, colorants, pigments and inks paints
• Class 9: Fire extinguishers
• Class 17: Insulation and barrier articles and materials; seals sealants and fillers

UAB removed Class 9 during the opposition proceedings, leaving the contested goods as those in Classes 2 and 17.

Relying on earlier EU and French trade mark registrations for 'FIREX', an opposition was filed by Dehns on behalf of Walter Kidde Portable Equipment, Inc. ('Kidde') against the application based on Article 8(1)(b) EUTMR. The decision was ultimately taken with regard to Kidde's EU trade mark, registered for "Thermostats; fire, smoke, gas alarms and detectors including accessories therefor; electrical door chimes and accessories therefor" in Class 9.

Given the clear similarities between the marks, this case turned on the comparison of the goods. Whilst the Opposition Division deemed these to be "clearly different", the Board agreed with Dehns that the respective goods were, in fact, similar, and that consumers were likely to believe that they derive from the same or economically-linked undertakings. The following discussion concerns the central factors behind this discrepancy.

Interpretation of the Goods

On behalf of Kidde, Dehns submitted that the goods covered by UAB's mark should be construed sufficiently broadly to also include fire-resistant and fireproof versions thereof (not least because during the course of proceedings UAB admitted to this being the nature of its goods). Nevertheless, the Opposition Division interpreted UAB's Class 2 goods as being materials used to cover or colour surfaces such as walls or furniture, and its Class 17 goods as being materials for insulating a building or a room from hot or cold weather, or from moisture and humidity in a bathroom. This construction of the goods laid the...