The trademark Der Scout was filed by Scout24 SE, a corporation established under the laws of the Federal Republic of Germany (the "Applicant"). The application was published for oppositions on November 25, 2007, and received one opposition filed on February 25, 2008 by H.H. SCOTT, INC. on Likelihood of confusion. the opponent was represented by DURÁN - CORRETJER, S.L.P. and proceedings were handled in English, and the oppositon was dismissed by the Euorpean Union Intellectual Property Office with decision issued February 25, 2008
The application was filed in German, and German was also language of all opposition proceedings (English was selected as the second language).
Cancellation Proceedings
A total of undefined cancellation proceedings were initiated against the trademark registration in 2009.The first Cancellation was filed by B & P Internetmanagement GmbH (represented by ???) on April 14, 2014 and Final decision – EUTM partially cancelled.
The renewal of the trademark was recorded by the office on May 2, 2018.
of the trademark registration was recorded on May 2, 2018. Change of name and professional address of the trademark registration was recorded on August 2, 2009. A transfer of the trademark registration was recorded on August 17, 2009. Change of name and address of the trademark registration was recorded on June 19, 2011. Change of name and professional address of the trademark registration was recorded on April 29, 2012. Application for revocation or for a declaration of invalidity of the trademark registration was recorded on July 24, 2013. Decisions on applications for revocation or for a declaration of invalidity of the trademark registration was recorded on August 10, 2014.
The Cancellation with reference B 000008214 was EUTM partially cancelled according to Article 52(1)(a) CTMR with decision issued on December 17, 2013 by the EUIPO.
Goods And Services
The mark was filed in class 1 with following description of goods:
Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry, preparations for keeping flowers fresh, chemical and natural soil conditioning preparations, preparations for clarifying water, algicides
Unprocessed artifical resins and plastics
Manures, in particular lawn fertilizers, rose fertilizers, conifer fertilizers, flower fertilizers, compound fertilizers and rhododendron fertilizers
Adhesive cement for industrial and household purposes
Chemical substances for preserving foodstuffs, Unexposed photographic films, All the aforesaid goods other than in connection with non-ferrous metals.
The mark was filed in class 2 with following description of goods:
Paints, varnishes, lacquers, preservatives against rust and against deterioration of wood, colorants
Mordants, namely wood, leather and polishing mordants
Raw natural resins
Metals in foil and powder form for painters, decorators, printers and artists.
The mark was filed in class 3 with following description of goods:
Bleaching preparations and other substances for laundry use
Cleaning, polishing, scouring and abrasive preparations
Soaps, laundry starch, perfumery, essential oils, cosmetics, deodorants for hygienic purposes, hair lotions, hair sprays, dentifrices, scented sprays and room sprays (included in class 3), essential oils for foods.
The mark was filed in class 4 with following description of goods:
Industrial oils and greases
Lubricants, dust absorbing, wetting and binding compositions
Solid, liquid and gaseous fuels, in particular coal, charcoal, coke, firelighters in paste and cube form, peat, wood, petrol, diesel, fuel oils, motor spirit for internal combustion engines, benzol, petroleum, methylated spirits, liquid gas including propane gas and butane gas, acetylene, oxygen and hydrogen
Lighting fuel
Candles, nightlights and wicks, lighters being equipment.
The mark was filed in class 5 with following description of goods:
Dietetic substances with a protein and/or carbohydrate base, being foodstuffs for nutrient-reduced and/or calorie-controlled consumption
Chemical and sanitary preparations, insecticides, fungicides, herbicides, molluscicides, nematicides
Medicines (non-prescription), dietetic substances adapted for medical use, dietetic substances with a vitamin base, being foodstuffs for nutrient-reduced and/or calorie-controlled consumption
Medicinal herbs in dried or preserved form, medicinal herb extracts, food supplements, namely preparations for enriching food for human consumption with trace elements, vitamins, flavouring and flavour-enhancing substances and roughage
Vitamin preparations
Dietetic food for babies
Plasters, materials for dressings
Antiseptics and disinfectants
Medicinal teas and drugs
Preparations for destroying vermin, in particular rodenticides
Adhesives for dentures
Deodorants for sanitary purposes, deodorising room sprays
The mark was filed in class 6 with following description of goods:
Non-electric cables and wires of common metal
Metal building materials
Transportable buildings of metal, in particular prefabricated garages
Pipes and tubes of metal
Safes and cash boxes
Small items of metal hardware
Ironmongery and rubbish bins and water-butts of metal and plastic, propane gas bottles
Goods of common metal, namely chains, barrel taps, bottle caps, junctions of metal and plastic for pipelines, drain traps (valves) of metal for drainpipes and water conduits, valves and pressure valves being machine parts, thermostatic valves being parts of heating installations, valves for vehicle tyres, grilles, furniture casters, signs, transport containers, tanks, and window, door and furniture fittings, all the aforesaid goods other than in connection with non-ferrous metals.
The mark was filed in class 7 with following description of goods:
Electric kitchen machines for crushing, chopping, grinding, cutting, pressing, stirring or beating, mechanical, electric and hand-operated meat mincing machines, sewing machines, dish washers, washing machines, spin dryers
Motors and engines (except for land vehicles)
Mechanically-operated agricultural and horticultural apparatus
Agricultural machines
Incubators for eggs
Electric cleaning machines, mechanical filtering apparatus
Filters being parts of machines, motors or engines
Pumps for conveying liquids, solids and air, hand-operated, electric or driven by a petrol engine or being attachments for hand-operated apparatus or machines
Electric lawn mowers, electric rakes, electric chaff cutters
Generators of electricity
Pressure valves and pressure regulators being machine parts
Machines for metalworking, woodworking and plastic processing, compressors, autogenous welding apparatus, sweeping machines, mechanical, electric and hand-operated snow clearing apparatus, mechanical, electric and hand-operated lifting apparatus
Knitting machines, ironing machines, electric household and kitchen appliances (included in class 7), foil sealing devices, mechanical, electric and hand-operated bread cutters and slicers, and can openers, mechanical, electric and hand-operated mixers, juicers, electric knives, electric crushers, food processors, pasta machines, mechanical, electric and hand-operated stirrers, meat choppers, flour mills, coffee grinders and multi-purpose cutters, presses for household purposes
Electric tools for DIY, cutting, drilling, impact drilling, planing, screwing, grinding and milling machines, hammer drills, drilling screws, drilling and milling stations, milling grinding motors, lathes, power saws, tilting saws, chain saws, jig saws, circular saws, bench circular saws, cutting devices, and work benches adapted for the aforesaid tools, electric planes, abrading apparatus and machines, electric staplers and hand-operated staplers, electric soldering irons and soldering stations, soldering guns, hot glue guns, vices, electric generators, current generators, hot air generators, paint spraying apparatus, mechanical, electric and hand-operated wallpaper removers, hot air apparatus and blowers, including for the removal of lacquers, tile splitting and cutting machines, electric welding apparatus and machines, high pressure washers, sand-blasting apparatus, drill grinders being apparatus and attachments for drilling machines, metal and voltage finders, garage door openers, roller shutters of metal and plastic, motors and elevators for roller shutters
Pressure flushing apparatus
Compressors and accessories, namely spray guns for paint, tyre inflation pressure gauges, spray guns, sand blasting apparatus
Mechanical rope hoists and pulley lifting tackle, including electric rope hoists and pulley lifting tackle
Mechanical, electric and hand-operated rope winches
Electric lawn trimmers, battery-operated hedge cutters, soil aerating devices, garden hoes, motor scythes, choppers, shredders, mulch mowers, petrol-driven and electric lawn mowers, lawn mowers in the form of tractors and other vehicles.
The mark was filed in class 8 with following description of goods:
Hand tools, instruments and implements (hand operated) used in agriculture, horticulture and forestry, for the construction of machines, apparatus and vehicles, and for structural engineering
Mechanical lawn mowers, mechanical lawn trimmers, electric and mechanical hedge cutters
Cutlery
Side arms
Razors
Electric clippers
Nail cutting apparatus
Trimmers for dogs.
The mark was filed in class 9 with following description of goods:
Electric and electronic apparatus and instruments (included in class 9)
Apparatus and instruments for communications engineering, namely for communications, high frequency and control engineering
Scientific apparatus and instruments for scientific research in laboratories
Nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments
Spectacles, binoculars
Apparatus for recording, transmission or reproduction of sound or images
Projectors, enlarging equipment, tripods for cameras
Colour photocopying equipment and machines, including electrostatic and thermal colour photocopying equipment and machines, photocopiers and other copying apparatus
Radio and television apparatus, voice machines, entertainment equipment, being adapted for use with television apparatus
Magnetic data carriers in the form of tapes, films, discs, cassettes, sound recording discs
Automatic vending machines and mechanisms for coin-operated apparatus
Cash registers, calculating machines, data processing equipment and computers
Electronic, magnetic and optical memories, ROM, PROM, EAROM and EPROM memories, CD-ROM memories, chips (integrated circuits), floppy discs, magnetic discs
Electric circuit boards with memory components, all the aforesaid goods with and without recorded information
Micro-processors
Peripheral devices for computers, in particular printers, screens, electromechanical, electronic, optical and acoustic input and output apparatus, keyboards, interfaces
Computer hardware, in particular cursor control apparatus for use with computer display apparatus and computer circuit boards
Apparatus, connecting cables and plugs for connecting or networking data processing equipment and communications devices
Amusement apparatus adapted for use with television receivers or computers only
Computer programms, databases
Fire-extinguishing apparatus
Vehicle breakdown warning triangles
Electric cables, wires, conductor and connection fittings therefor, commutators, distribution boards and distributing boxes
Batteries, tachometers, transformers
Exposed film
Clothing for protection against accidents, including shoes, special clothing for life-saving purposes, face protection shields, protective goggles or protective masks for workers
Diving suits, diving goggles, ski goggles
Protective helmets for people engaging in winter sports, riders, cyclists and motorcyclists
Vacuum cleaners, electric and non-electric wax polishers, electric irons
Foil welding apparatus
Electric soldering apparatus, electric welding apparatus, battery-charging apparatus
Special-purpose containers, specially adapted for the aforesaid apparatus and instruments, all the aforesaid goods other than in connection with non-ferrous metals.
The mark was filed in class 10 with following description of goods:
Orthopaedic articles, namely orthopaedic bandages, corsetry, hosiery and shoes
Suture materials
Heated cushions and electric blankets for medical purposes
Healthcare apparatus, namely arterial blood-pressure measuring apparatus, hearing aids, thermometers, blood-sugar measuring apparatus, inhalers, acupuncture apparatus, tanning apparatus, massage apparatus, apparatus for physiotherapy, electric current stimulator apparatus, stethoscopes for blood-pressure measuring apparatus, infrared radiation apparatus, support cushions, wheelchairs, walking aids, pulse meters, whirlpool baths for medical purposes, teeth-polishing apparatus, condoms, feeding bottle closures, teats.
The mark was filed in class 11 with following description of goods:
Electric hot-water bottles, electrically-heated footwarmers
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, tumble driers
Heated cushions and electric blankets, not for medical purposes
Heat pumps, electric edible ice and yoghurt makers
Taps and cocks.
The mark was filed in class 12 with following description of goods:
Land and water vehicles, in particular trailers and boat trailers for automobiles, mopeds, motorcycles, bicycles, kayaks, rowing boats and sailing boats, snow ploughs, snow caterpillar tractors
Wheelbarrows, wheelchairs for invalids, pushchairs, golf carts, hose carts, dinghies
Parts for land and water vehicles, in particular starters, silencers, brakes, direction indicators, reversing alarms, horns, gear boxes, couplings, motors and engines and driving belts, fans and cylinders for engines, vehicle seats, steering wheels, wheels, tyres, wheel rims, tyre valves, shock absorbers, accessories for automobiles and bicycles, namely luggage and ski racks, snow chains, spoilers, head rests, safety belts, safety seats for children, dress guards for bicycles, bells and air pumps, puncture repair kits
Roof boxes.
The mark was filed in class 13 with Fireworks.
The mark was filed in class 14 with Precious metals and their alloys and goods in precious metals or coated therewith, namely works of art, ornaments and decorations, watch straps, medals and medallions, jewellery, costume jewellery, precious stones and gemstones and Horological and chronometric instruments..
The mark was filed in class 15 with Musical instruments.
The mark was filed in class 16 with following description of goods:
Paper and cardboard (included in class 16)
Goods of paper and cardboard, namely paper towels, napkins of paper, filter paper, handkerchiefs of paper, toilet paper, napkins of paper, containers for packaging, bags for packaging, printed matter, bookbinding material, namely bookbinding yarn, linen and other textile materials for bookbinding
Photographs, stationery, photograph albums, adhesives for stationery or household purposes, including adhesives for handicraft work
Adhesive tapes for stationery or household purposes
Artists' materials, namely modelling clay, canvas, Indian inks, palettes and easels for painters, mordants and sheet metals for artists
Paint brushes
Electric and electronic typewriters, office requisites (except furniture), namely addressing machines, franking machines, document files, letter trays, letter openers, writing tablets, perforators, stapling presses, dictating machines, paper clips and staples, inking ribbons, correcting agents for offices, stamps (seals), inking pads, ink for stamps, inks for writing and drawing, Indian ink, fastening holders for documents, files and file covers for documents, spines for files and file covers, holders for pens and pencils, pencil sharpeners, desk furniture, fountain pen cups, card index boxes, desk files, waste paper baskets of metal and not of metal, office scissors, paper cutters, letter scales, slide rules
Instructional and teaching material (except apparatus) in the form of printed matter, animal and plant preparations, geological models and preparations, globes, drawing implements for wall boards
Ring binders, conference folders, correspondence folders, document folders, writing and accounting pads, note books, vocabulary books, homework diaries, packaging material of plastic, namely sleeves, bags and films
Printers' type and printing blocks.
The mark was filed in class 17 with following description of goods:
Films, sheets, and rods of plastic in extruded form for use in manufacture
Packing, stopping and insulating materials
Asbestos, mica and goods thereof, namely fire-proof cloths and insulating suits
Flexible pipes, not of metal
Adhesive bands, other than stationery and not for medical or household purposes.
The mark was filed in class 18 with following description of goods:
Leather and imitations of leather and goods made from these materials, namely bags and other containers not specifically designed for the objects being carried, and small goods of leather, in particular purses, pocket wallets, key wallets
The mark was filed in class 19 with Building materials (non-metallic), in particular semi-worked wood, and beams, boards and panels, plywood, building glass, in particular tiles and window glass, except glass for vehicle windows, non-metallic rigid pipes for building and Transportable buildings, not of metal, in particular prefabricated garages, summer houses, storage sheds..
The mark was filed in class 20 with following description of goods:
Furniture, camping furniture, bedding (except bed linen), mattresses, pillows, sleeping bags for camping
Mirrors, picture frames
Goods of wood or wood substitute materials, namely mouldings for picture frames, curtain rails, pegs, cases, transport pallets, casks, containers, chests, work benches, tanks, laths, tool handles, spools, coat hangers, clothes-pegs, works of art
Goods of plastic, namely mouldings for picture frames, curtain rails, pegs, cases, transport pallets, casks, containers, chests, tanks, rivets, screws, pins, signs, furniture, window and door fittings, curtain rails and curtain hooks, slatted indoor blinds, coat hangers, stoppers for bottles, stakes for plants or trees
Letterboxes, not of metal or masonry
Goods, (included in class 20) of reed, cork, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum.
The mark was filed in class 21 with following description of goods:
Small hand-operated household and kitchen apparatus (except vaporisers and spraying machines for liquids and powders of all kinds) and portable containers for household and kitchen use
Electric combs and toothbrushes, electric manicure equipment, water apparatus for cleaning teeth and gums, sprinklers
Combs and sponges
Brushes (except paint brushes)
Articles for cleaning purposes, steel wool
Cooking utensils of metal, including pots, pans and kettles, buckets, goods of glass, porcelain and earthenware for household and kitchen use, namely plates, cups, saucers, pans, bowls, jars, tureens, beer mugs, beer glasses, wine and water glasses, vases, glasses, dishes, marmalade and jam containers, sugar and cream sets, sets for vinegar, pepper and oil, fruit bowls, mixing bowls, carafes and bottles
Tableware and epergnes (except cutlery), saucepans.
The mark was filed in class 22 with following description of goods:
Rope, string, nets, namely fishing nets and net bags for shopping
Tents, awnings, sails, bags for packaging of textile material
Bags (sacks) for the transport and storage of goods.
The mark was filed in class 23 with Yarns and threads, for textile use.
The mark was filed in class 24 with Textiles and textile goods, namely fabrics, curtains, blinds, household linen, table and bed linen, bed and table covers, materials for furniture covers, interior decorating fabrics.
The mark was filed in class 25 with Clothing, including shoes, boots, slippers and headgear.
The mark was filed in class 26 with following description of goods:
Lace and embroidery, ribbons and braid
Buttons, hooks and eyes, pins and needles
Artificial flowers.
The mark was filed in class 27 with Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors of rubber, plastic or textile materials, in particular carpeting, carpet tiles, bedside rugs, bridges and runners, wall hangings (non-textile).
The mark was filed in class 28 with following description of goods:
Playthings, playing cards, games, in particular electric and electronic games (including video games), other than those adapted for use with television receivers only
Gymnastic and sporting appliances, snorkels
Decorations for Christmas trees.
The mark was filed in class 29 with following description of goods:
Meat, fish, shellfish, live and not live, poultry and game, including preserved, prepared or frozen meat, fish, shellfish, poultry and game, preserved, dried or frozen fruits and vegetables
Meat extracts, meat, fish, fruit and vegetable jellies
Jams and marmalade
Eggs, milk and milk products, namely butter, cheese, cream, yoghurt, milk powder for food
Edible oils and fats
Prepared meals, mainly consisting of meat, fish, shellfish, live and not live, poultry, game, vegetables or prepared fruit (including the aforesaid goods in frozen form), desserts of yoghurt, quark or cream.
The mark was filed in class 30 with following description of goods:
Salt for food, salad dressings, mayonnaise
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee and tea, flour and preparations made from cereals (except foodstuffs for animals), in particular breakfast cereals
Pasta, chocolate and chocolate goods, pralines, including pralines with a liquid filling of wine and/or spirits, sweets, bread, pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, namely edible salt, salt for cattle and road salt
Mustard, vinegar, sauces (except salad dressings)
Spices and spice blends
Food flavourings [other than essential oils].
The mark was filed in class 31 with following description of goods:
Agricultural, horticultural and forestry products, namely grains and other propagation material, unprocessed grains, undressed timber
Natural plants and flowers, flower bulbs and tubers
Fresh fruit and vegetables, in particular potatoes, seeds
Dried plants, straw mulch and litter peat, cat litter, foodstuffs for animals, in particular dog and cat food
Live animals, in particular ornamental fish.
The mark was filed in class 32 with following description of goods:
Beer, mineral and aerated waters and other non-alcoholic drinks
Syrups and other preparations for making beverages
Fruit beverages and fruit juices.
The mark was filed in class 33 with Alcoholic beverages (except beers), particularly wines, spirits and liquors.
The mark was filed in class 34 with following description of goods:
Tobacco
Tobacco products, namely cigarettes and cigars, smokers' articles, namely tobacco tins, cigar and cigarette holders, cigar and cigarette cases, ashtrays, none of the aforesaid goods of precious metal or their alloys or coated therewith, pipe stands, pipe cleaners, cigar-cutters, pipes, lighters, pocket equipment for rolling cigarettes, cigarette papers, cigarette filters, lighter fuel, tobacco pouches, water pipes
Matches.
The mark was filed in class 35 with Concluding commercial transactions, for others and E-commerce provider services, namely order placement and delivery service for electronic ordering systems..
The mark was filed in class 36 with following description of goods:
Insurance
Financial affairs
Monetary affairs
Real estate affairs.
The mark was filed in class 37 with Building construction and Repair..
The mark was filed in class 38 with following description of goods:
Providing access to databases
Transmission of data contained in databases
Providing telecommunication facilities for the placing of orders for products and services via electronic data communication
Providing access to, and supplying (transmission) of, data, information, texts and images
Providing online computer databases and online searchable databases, all the aforesaid services other than in connection with non-ferrous metals.
The mark was filed in class 39 with following description of goods:
Transport, in particular delivery of parcels and goods, freight forwarding (freight transport), freight brokerage, haulage (freight transport) and transport brokerage, delivery of mail order goods
Packaging and storage of goods
Organizing and arranging travel
Replenishment of sales stands and sales racks
Storage information
Car parking
Rental of vehicles and vehicle fittings (luggage carriers).
The mark was filed in class 40 with Treatment of materials, in particular printing, photographic film development, photographic printing services, film processing (including digital), recycling of rubbish and waste, incineration and destruction of rubbish and waste.
The mark was filed in class 41 with following description of goods:
Education
Providing of training
Entertainment, sporting and cultural activities
Organising and arranging of conferences, congresses and symposiums, rental of audio and video apparatus
Provision of on-line computer games
Publication and editing of books, newspapers and periodicals.
The mark was filed in class 42 with Providing platforms for the providing of goods and services in databases with electronic, interactive access for immediate order placement, computer services, namely installation of websites on the Internet, for others (webhosting), and hosting of online web facilities for others, for organising and conducting online meetings and interactive online discussions and All the aforesaid services other than in connection with non-ferrous metals..
The mark was filed in class 43 with Services for providing food and drink, temporary accommodation.
The mark was filed in class 44 with following description of goods:
Medical services
Hygienic and beauty care for human beings or animals
Agriculture, horticulture and forestry services.
The mark was filed in class 45 with Personal and social services to meet the needs of individuals and Security services for the protection of property and, individuals..