The trademark TALKING TOM AND FRIENDS was filed by Outfit7 Limited, a corporation established under the laws of the United Kingdom of Great Britain and Northern Ireland (the "Applicant"). The application was published for oppositions on May 12, 2014, and received one opposition filed on August 6, 2014 by Hosta Werk für Schokolade-Spezialitäten GmbH & Co. KG on Likelihood of confusion. the opponent was represented by MÜLLER SCHUPFNER & PARTNER PATENT- UND RECHTSANWALTSPARTNERSCHAFT MBB and proceedings were handled in English, and the oppositon was dismissed by the Euorpean Union Intellectual Property Office with decision issued August 6, 2014
It was designated 'Basic Application' for International Application 1365037 at the World Intellectual Property Organization (WIPO).
The application was filed in Slovenian, and Slovenian was also language of all opposition proceedings (English was selected as the second language).
The renewal of the trademark was recorded by the office on November 14, 2023.
A transfer of the trademark registration was recorded on September 25, 2014. International trade mark of the trademark registration was recorded on September 14, 2017. Change of name and address of the trademark registration was recorded on February 18, 2018. Change of name and address of the trademark registration was recorded on March 10, 2021. Appointment and Replacement of representative of the trademark registration was recorded on June 9, 2021.
The Appeal with reference B R0005/2016-2 was Trade mark application partially refused according to Rule 22(3) CTMIR with decision issued on May 18, 2016 by the EUIPO. The Opposition with reference B 002394693 was partially refused EUTMA/IR according to Article 8(1)(b) CTMR with decision issued on November 3, 2015 by the EUIPO.
Goods And Services
The mark was filed in class 3 with following description of goods:
Products and preparations for the care and cleansing of hair and skin, namely, hair colors, hair conditioners, hair gels, hair glues, hair mousses, hair serums, hair sprays, hair tonics, hair waxes, hair volumizers, pomades, skin cleansing gels, moisturizing creams, revitalizing tonics
Spray on air fragnancing preparations
Shaving preparations
Shampoos for pets
Shampoos
Skin and face creams and lotions
Skin moisturizer
Soaps
Sun block
Sun-tanning preparations
Temporary tattoo sprays and stencils therefor sold as a unit (for cosmetic purposes)
Tissues impregnated with cosmetic lotions
Toilet water
Non-medicated toiletries.
The mark was filed in class 5 with following description of goods:
Absorbent cotton
Absorbent wadding
Adhesive bands for medical purposes
Adhesive plaster
Adhesive tapes for medical purposes
Albuminous foodstuffs for medical purposes
Antiparasitic collars for animals
Antiseptics
Antiseptic cotton
Balms for medical purposes
Bath preparations, medicated
Bath salts for medical purposes
Bandages for dressings
Belts for sanitary napkins [towels]
Capsules for medicines
Capsules for pharmaceutical purposes
Chewing gum for medical purposes
Cotton for medical purposes
Court plaster
Cotton wool in the form of sticks for medical purposes
Diapers made of cellulose
Diapers made of paper
Dietary food supplements
Dietary and nutritional supplements
Dietetic beverages adapted for medical purposes
Dietetic foods adapted for medical purposes
Dietetic foods adapted for infants
Dietetic substances adapted for medical use
Disinfectants
Disinfectants for hygiene purposes
Dog lotions
Dog washes
Drugs for medical purposes
Eye-wash
First-aid boxes [filled]
Fly catching adhesives
Fly catching paper
Fly destroying preparations
Fly glue
Fungicides
Herbicides
Germicides
Herb teas for medical purposes
Hygienic bandages
Insect repellents
Insecticides
Lotions for pharmaceutical purposes
Lotions for veterinary purposes
Lozenges for pharmaceutical purposes
Material for stopping teeth
Dental wax
Medical preparations for slimming purposes
Medicinal alcohol
Medicinal drinks
Medicinal herbs
Medicinal oils
Medicinal tea
Medicine cases [portable] [filled]
Medicated confectionery
Menthol
Mineral supplements in tablet, powder or capsule form
Mothproofing paper
Mothproofing preparations
Mouthwashes for medical purposes
Mud for baths
Napkins for incontinents
Ointments
Oxygen baths
Pants, absorbent, for incontinents
Poultices
Compresses
Protein dietary supplements
Remedies for foot perspiration
Repellents for dogs
Royal jelly dietary supplements
Salts for mineral water baths
Sanitary napkins
Sanitary pants
Sanitary towels
Smelling salts
Sunburn ointments
Sunburn preparations for pharmaceutical purposes
Syrups for pharmaceutical purposes
Sterilising preparations
Therapeutic preparations for the bath
Tissues impregnated with pharmaceutical lotions
Vitamin preparations in the nature of food supplements.
The mark was filed in class 9 with following description of goods:
Application development tool programs for personal computers, mobile digital electronic devices, hand held computers, and mobile telephones
Carrying cases for cell phones, telephones, pagers and mobile computers
Computer game software and entertainment software in the nature of computer games for use on mobile and cellular phones, handheld computers, computers, video game consoles, both handheld and free standing, and other wireless point of sale devices
Computer game software featuring character recognition, voice recognition, touch sensitivity, light sensitivity, gravity sensitivity
Computer game software for electronic computer apparatus featuring interactive and multimedia functions that enable the user to integrate text, audio, graphics, still images and moving pictures
Computer game software
Decorative magnets
Digital media, namely, CDs, DVDs, memory cards, and downloadable audio, video, and multimedia files, featuring music, motion picture and animated cartoon characters
Digital memory devices, namely, blank CDs and DVDs, audio/video discs, minidiscs, USB flash drives, flash memory cards
Downloadable computer game software for playing video, computer and on-line games
Downloadable ring tones, music, videos, and electronic games, via the internet and wireless devices
Downloadable software for developing, designing, modifying, recording and customizing sound and speech
Downloadable software for developing, designing, modifying, recording and customizing video, computer and on-line games
Downloadable video game software featuring touch and voice control
Earphones
Eyewear cases
Eyewear
Headphones
Interactive multimedia computer game software programs
Mouse pads
Software for enabling video computer and on-line games to be run on multiple platforms
Speech recognition software
Touch and voice driven interactive video game software
Virtual reality headsets and helmets for use in playing video games
Walkie-talkies
Loudspeakers
Handheld computers
Mobile phones
Microphones.
The mark was filed in class 11 with following description of goods:
Air purifiers
Barbecues
Bed warmers
Beverages cooling apparatus
Bicycle lights
Bicycle reflectors
Chandeliers
Disinfectant dispensers for toilets
Dispensing units for air fresheners
Electric blankets, not for medical purposes
Electric fans
Electric kettles
Electric lamps
Electric lights for Christmas trees
Electric popcorn poppers
Electric toasters
Electric vaporizers
Flashlights
Globes for lamps
Hair dryers
Ice boxes
Lamp casings
Lamp mantles
Lamp reflectors
Lamp shades
Lamps
Lampshade holders
Lanterns for lightning
Non-electric pocket warmers, namely, chemically-activated heating packets for non-electric pocket warmers, namely, chemically-activated heating packets for warming hands
Outerwear namely outdoor winter clothing namely, winter boots and jackets and coats and ski pants and cardigans and anoraks and wind resistant jackets, rain coats, soft-shell jackets, shorts, dresses, skirts, coats, vests, sweaters, ties, scarves, sweatshirts, hooded sweatshirts, gowns
Bibs, not of paper
Children's and infant's apparel, namely, sports jumpers, one-piece garments, t-shirts, arm and leg warmers, trousers, coats, jackets, costumes, gloves and mittens, hats, rompers, sleepwear, socks, hooded sweatshirts
Footwear
Headwear
Wrist bands.
The mark was filed in class 27 with following description of goods:
Bath mats
Carpets and rugs
Door mats
Floor coverings
Foam mats for use on play area surfaces
Linoleum
Wall hangings, not of textile
Wallpaper.
The mark was filed in class 28 with following description of goods:
Action figure toys
Arcade games
Arcade-type electronic video games
Articles of clothing for toys
Balloons
Balls for games
Bath toys
Battery operated action toys
Board games
Sleds
Bubble making wand and solution sets
Card games
Christmas tree ornaments and decorations
Dolls designed for resemble computer game characters
Dolls responding to signals from other electronic devices
Plush toys designed for resemble computer game characters
Plastic toys designed for resemble computer game characters
Plush toys responding to signals from other electronic devices
Electronic novelty toys, namely, toys that electronically record, play back, and distort or manipulate voices and sounds
Gambling machines
Game controllers for computer games
Ice skates
Infant toys
Inflatable toys
In-line roller skates
Interactive hand-held audio-visual games with displays not for use with television receivers
Kite reels
Kites
Mechanical toys
Musical toys
Parlor games
Party favors in the nature of small toys
Party games
Pinball games
Plastic character toys
Plush toys
Protective padding for playing sports, namely, skateboarding, in line skating, baseball, basketball, BMX bicycle motocross, field hockey, football, hockey, inline skating, lacrosse, martial arts, motocross, mountain biking, ski, snowboard, softball, volleyball
Puppets
Roller skates
Rubber character toys
Sailboards
Sandbox toys
Skateboards
Skating boots with skates attached
Action skill games
Skis
Snow boards
Squeeze toys
Stand-alone video output game machines
Surf boards
Swings
Tabletop games
Talking dolls
Talking toys
Toy masks
Toy snow globes
Toy vehicles
Water toys
Wind-up toys
Stand-alone video game machines for use with external display screens or monitors
Building blocks [toys]
Body boards
Chess games
Apparatus for games
Electronic toys
Electronic learning toys
Battery operated toys
Puzzles
Plastic toys
Electronic remote controlled toys.
The mark was filed in class 29 with following description of goods:
Bacon
Bouillon
Bouillon concentrates
Broth
Broth concentrates
Butter
Caviar
Cheese, charcuterie
Croquettes
Crystallized fruits
Drinks made from dairy products
Edible oils and fats
Eggs
Fruit peel
Fish, tinned
Fruits, tinned
Food products made from fish
Frosted fruits
Frozen fruits
Fruit chips
Jellies, jams, compotes, fruit and vegetable spreads
Maize oil
Margarine
Marmalade
Meat jellies
Meat tinned
Meat extracts
Milk beverages
Olive oil for food
Preserved mushrooms
Preserved fruits
Preserved vegetables
Pates
Peas, preserved
Potato chips
Potato fritters
Preparations for making bouillon
Preparations for making soup
Raisins
Soups
Sea-weeds (for eating)
Yoghurt
Processed seafood
Salads
Sauerkraut
Sausages
Sesame oil
Seafood, tinned
Tofu
Tomato purée
Vegetable salads
Vegetable soup preparation
Vegetables, tinned
Whipped cream.
The mark was filed in class 30 with following description of goods:
Aromatic preparations for food
Binding agents for ice cream [edible ices]
Biscuits
Bread rolls
Buns
Cakes
Cake powder
Cereal flakes
Coffee
Cheese curls [snacks]
Chewing gums
Chocolate
Preparation for making beverages [chocolate based]
Chocolate beverages with milk
Cocoa
Cocoa-based beverages
Cocoa beverages with milk
Cocoa powder
Cocoa products
Coffee-based beverages
Coffee beverages
Coffee flavourings
Confectionery ices
Cookies
Cooking salt
Corn flakes
Corn meal
Crackers
Curry spices
Custard
Edible ices
Edible decorations for cakes
Frozen yoghurt
Fruit jellies
Fruit sauces
Flavourings for cakes
Gingerbread
Honey
Herbal teas and herbal infusions
Herbal preparations (not for medical use)
Ice cream
Ice cream drinks
Baking-powder
Ketchup
Liquorice
Macaroni
Marzipan
Marzipan substitutes
Mayonnaise
Meat gravies
Meat pies
Meat tenderizers, for household purposes
Oatmeal
Pastry
Popcorn
Pancakes
Pasta
Pepper
Peppers [seasonings]
Pizzas
Pretzels
Puddings
Puddings in powder form
Ravioli
Relishes
Rice based snack food
Rice cakes
Rusks
Salad dressings
Sandwiches
Sherbets [ices]
Snack foods
Syrup
Spaghetti
Spices
Soy sauce
Spreads containing chocolate
Sweetmeats [candy]
Sushi
Sugar
Tarts
Tea based beverages
Teas
Tomato sauce
Udon (Japanese style noodles)
Vinegar
Condiments
Wasabi paste
Wheat flour
Vanilla
Waffles.
The mark was filed in class 32 with following description of goods:
Aerated water
Aperitifs, non-alcoholic
Beers
Cider, non-alcoholic
Cocktails (non-alcoholic)
Energy drinks
Essences for making beverages
Fruit drinks and fruit juices
Fruit nectars, non-alcoholic
Lemonades
Milk of almonds (beverage)
Mineral water
Non-alcoholic drinks and beverages
Non-alcoholic fruit juice beverages
Pastilles for effervescing beverages
Powders for effervescing beverages
Smoothies
Soda water
Soft drinks
Sorbets (beverages)
Syrups
Fruit juice concentrates
Table waters
Vegetable drinks and vegetable juices
Waters (beverages)
Whey beverages.
The mark was filed in class 35 with following description of goods:
Wholesaling and retailing services relating to the sale of party favours, namely, plastic and paper jewelry, plastic toys, paper hats, paper and plastic whistles and magic sets, festive decorations and ornaments, namely, products for decorating rooms, clothing, jewelry and paper, soaps, perfumery, essential oils, cosmetics, hair lotions, hair care products, toiletries, dentifrices, personal hygiene products, cleaning, polishing and abrasive preparations, substances for laundry use, manicure tools, nail care preparations, nail polish, false nails, dietetic substances, food for babies, sanitary preparations, candles, wicks, spills for lighting, greases, lubricants, oils for paints, cutlery, crockery, manicure sets, shaving instruments, razors, machines and machine tools for kitchen or household purposes, namely, dishwashers, washing machines, cooker hoods, kitchen stoves and mixers, hand-held tools, films, cameras, photo discs, video recorders, audio and visual products, audio and video tapes, records and discs, instruments and apparatus for the recording, transmitting and/or reproduction of sounds and/or images, televisions, cassette tape players and/or recorders, video cassette and/or disc players and/or recorders, radios, telephones, wireless phones, mobile phones, mobile phone cases, decorations and straps for phones, call indicators, calculating machines, calculators, electronic and computer games, cinematographic films, lights, fans, cooking utensils, cake and pastry moulds, toasters, ovens, kitchen utensils, namely, juice squeezers, blenders, cutters, scales, pans, dishes, cutlery, plates, cups, glasses and bowls, utensils and containers for serving or storing food and/or beverages, chop sticks, cutting instruments, porcelain, chinaware, crystalware, enamelware, silverware, glassware, terra-cottaware, earthenware, ceramics, hair dryers, lamps, lamp shades and parts and fittings therefor, baby carriages, balloons, bicycle horns
Clocks and watches and accessories and parts and fittings therefor, jewellery and imitation jewellery, ornaments
Goods in precious metal or coated therewith, namely, jewelry, watches, clocks, sculptures and boxes, music boxes, musical instruments, pictures, photographs, stationery, paper and cardboard and goods made from these materials, namely, containers, boxes, bags, posters, towels and handkerchiefs, artists materials, paint brushes
Writing instruments, printed matter, books, newspapers, magazines and periodicals, greeting and Christmas cards, playing cards, packing and packaging materials, picture frames and stands, adhesives for stationery or household purposes, goods made of leather and/or imitations of leather, namely, bags, wallets, clothes, shoes, riding equipment and furniture, bags and luggage
Purses and wallets, umbrellas, walking sticks, furniture, mirrors, coat hangers and pegs, boxes and containers, name plates, containers, combs, sponges, brushes, articles for cleaning purposes, spectacles, spectacle frames and sunglasses and cases and accessories therefor, textile and textile goods, bedding, and table linens and covers, napkins
Mats, furniture, haberdashery, handkerchiefs, articles of clothing, footwear and headgear, namely, products from clothing, footwear and headgear, namely, swimwear, jackets and waterproof jackets, rain wear, belts, underwear, nightwear, hats, caps, sun visors, socks, stockings, tights, masquerade costumes, jackets, knitwear, shirts
Men's shirt, outerwear, shorts, dresses, skirts, coats, vests, sweaters, ties, scarves, sweatshirts, robes, bibs, clothing for children and infants, shoes, sports sneakers, slippers, shoes for the beach, covers and cuffs and buttons, badges, ribbons and braid, lace and embroidery, hair pins and ornaments, braces, shoe ornaments, hat ornaments, zipper and zipper fasteners, carpets, rugs and mats, toys, games and playthings, dolls
Decorations for Christmas trees, beverages, floral products, matches, cigars, cigarettes and smokers' articles
Advertising
Marketing
Organization of exhibitions for commercial or advertising purposes
Publication of publicity texts
Sales promotion (for others)
Advertising agencies
Business management of performing artists
Import-export agencies
Compilation of information into computer databases
Direct mail advertising
Business management of hotels
Marketing services
Outdoor advertising
Personnel recruitment
Publicity agencies
Radio advertising
Television advertising
On-line advertising on a computer network
Procurement services for others (purchasing goods and services for other businesses)
Rental of advertising time on communication media
Office machines and equipment rental
Rental of vending machines
Television commercials
Rental of advertising space.
The mark was filed in class 38 with following description of goods:
Telecommunications
Cable television broadcasting
Cellular telephone communication
Communications by fiber optic networks
Communications by telegrams
Communications by telephone
Computer aided transmission of messages and images
Electronic mail
Facsimile transmission
Radio broadcasting
Sending of telegrams
Telegraph services
Telephone services
Television broadcasting
Wire service
Paging services
Providing telecommunications connections to a global computer network
Providing user access to a global computer network
Telecommunications routing and junction services
Electronic bulletin board services
Teleconferencing services
Music broadcasting
Terrestrial, cable or satellite broadcasting of radio, television, teletext or of data
Computer aided transmission of messages, data and images
Services relating to communications by computer terminals
News agency services
Information and advisory services
Broadcasting, transmission and dissemination of programs, films, images, music, games, excerpts and text via all forms of technology to television sets, personal computers and recorders, wireless receptors, telephones and mobile phones, public screens and any other device or facility capable of receiving such content
Communication by consumer video game apparatus
Providing information on communication by consumer video game apparatus
Communication by arcade video game machines
Providing information on communication by arcade video game machines
Communication by handheld game apparatus
Providing information on communication by handheld game apparatus
Message sending.
The mark was filed in class 41 with following description of goods:
Amusement park and theme park services
Animation film and video production services
Distribution of radio programs for others
Distribution of television programs for others
Entertainment in the nature of competitions in the field of computer and video games
Entertainment in the nature of live stage performances featuring animated characters
Entertainment in the nature of theater productions
Entertainment services, namely production of entertainment television shows and interactive television programs for distribution via television, cable, satellite, audio and video media, cartridges, laser discs, computer discs and electronic means
Entertainment services, namely providing online computer games and online video games that are accessible and playable via mobile and cellular phones and other wireless devices
Entertainment services, namely the provision of continuing entertainment and news programs featuring entertainment information delivered by communication and computer networks
Entertainment services, namely, live, televised and movie appearances by a professional entertainer
Entertainment services, namely, providing a web site featuring non-downloadable musical performances, musical videos, related film clips, photographs and other multimedia entertainment materials featuring animated cartoon characters
Entertainment services, namely providing a web site in the field of music, video games, and animated cartoon characters
Entertainment services, namely, providing on-line computer games
Entertainment services, namely, providing touch and voice driven online computer games for digital mobile devices
Entertainment, namely, a continuing entertainment animated cartoon show broadcasted over global and local area computer networks
Multimedia publishing of books, magazines, journals, software, games, music, and electronic publications
On-line gaming services
Online multiplayer video game tournaments
Production and provision of entertainment and news via communication and computer networks, namely, production and distribution of entertainment and news television programs for other, multimedia production services
Production of audio, video, and multimedia recordings
Production of radio and television programs
Production of sound recordings
Production, and distribution of motion pictures and rental of motion picture films
Providing downloadable audio and video files in the field of entertainment relating to interactive computer game software, interactive video game software and interactive computer and video games
Providing games for use on mobile devices
Providing news and information in the field of entertainment regarding interactive computer game software, interactive video game software and interactive computer and video games, via electronic, wireless and computer networks
Providing non-downloadable video and audio recordings about animated cartoon characters made within computer games via a website
Providing online computer and video games accessed and played via electronic, wireless and computer networks
Rental of sound recordings
Video production services
Video film production
Video recording services.
The mark was filed in class 42 with following description of goods: