VOLT Opposition: Proof of Use and Partial Goods Conflict

Because the earlier EUTM was registered on 5 May 2013 and the Irish application was published on 19 July 2024, the earlier mark had been registered for more than five years at the relevant date. The proof-of-use request is therefore valid. NordVolt must prove genuine use in the European Union during the five years preceding publication, namely 19 July 2019 to 18 July 2024, for the goods on which it relies.

Batteries. The invoices, sales figures, and Irish/German/Austrian activity are capable of establishing genuine use. The €180,000 Irish sales in 2023 are not trivial, and use in Germany and Austria also counts for an EUTM. NordVolt can rely on batteries.

Battery chargers. The evidence is a single German brochure. There are no invoices, no dated sales, no volumes, and no evidence that the brochure was distributed in the relevant period. A brochure alone is weak evidence of genuine use; it may show advertising, but not necessarily commercial use. NordVolt cannot safely rely on chargers.

Electrical cables. There is no evidence at all. NordVolt cannot rely on cables.

The opposition therefore proceeds on batteries only. If NordVolt tries to rely on chargers or cables, the applicant should ask the Controller to disregard those goods. This does not automatically defeat the opposition, because batteries may still be similar to some of Liffey Power's goods.

Section 10(1) requires identical marks and identical goods. The marks are identical, but the goods are not. 'Batteries' is not identical to 'power banks' or 'battery chargers'; 'electrical cables' is broader than 'USB cables'. Section 10(1) therefore does not decide the case.

Section 10(2) requires similarity of goods and likelihood of confusion. The marks are identical, which increases the risk.

• Power banks. These are portable rechargeable power supplies. They are similar to batteries: same general purpose, overlapping trade channels, and often complementary. Given the identical mark, likelihood of confusion is likely.
• Battery chargers. Chargers are complementary to batteries and are often sold together. They are similar goods. The identical mark makes confusion likely.
• USB cables. These fall within electrical cables. They are identical or highly similar, and confusion is likely.
• Smartphone cases. Cases protect phones; they are not similar to batteries. They may be sold in the same shops, but that is not enough. No likelihood of confusion.
• Class 35 retail services. Retail services relating to electronic goods are generally dissimilar to the Class 9 goods themselves. The fact that the retail service sells batteries does not make the services similar to batteries. No likelihood of confusion under section 10(2).

The likely outcome is that the opposition succeeds for power banks, battery chargers and USB cables, and fails for smartphone cases and Class 35. Liffey Power can delete the three failing goods, but that concedes the opposition on those goods and may affect costs.

Section 10(3) requires a reputation, similarity or identity of marks, and a link between the marks such that use would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. NordVolt claims reputation in batteries. Even if the Irish sales and EU use establish a reputation, VOLT is a suggestive word for electrical goods; it is the unit of electrical measurement. Its inherent distinctiveness is low, and the evidence of enhanced distinctiveness is limited. A reputation is possible but not overwhelming.

The link for smartphone cases is weak. Cases are accessories, but the average consumer may not connect VOLT batteries with VOLT phone cases. NordVolt would need evidence of a strong reputation and of a real risk of unfair advantage or detriment, not just a theoretical association. The section 10(3) claim is unlikely to rescue the dissimilar goods.

Procedure. Liffey Power must file its counterstatement by 20 December 2024. It can admit the opposition in part by deleting battery chargers and USB cables, and defend power banks and smartphone cases. Amendments after publication are limited to deletion or restriction; Liffey Power cannot add goods or broaden the specification. It should also consider a coexistence agreement: NordVolt may accept a restriction to smartphone cases and Class 35 in exchange for deletion of the conflicting goods. If the parties settle, the Controller should be asked to dispose of the opposition on agreed terms, with costs addressed in the settlement.