OPPOSITION No B 2 508 581

Caja Rural del Sur, Sdad. Coop. de Credito, Calle Murillo, 2, 41001 Sevilla, Spain

(opponent), represented by Newpatent, Puerto, 34, 21001 Huelva, Spain (professional representative)

a g a i n s t

Montanina S.r.l., Via Torchio 20, 43037 Lesignano De' Bagni (Parma), Italy (applicant), represented by Bugnion S.p.A., Largo Michele Novaro 1/A, 43121 Parma; Italy, (professional representative).

On 12/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 508 581 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 593 207, namely against all the services in Classes 35 and 41. The remaining goods and services were not contested. The opposition is based on European Union trade registrations No 892 125, RURALVIA, and No 892 075, CAJA RURAL DEL SUR, and Spanish trade mark registration No 2 954 756 . The opponent invoked Article 8(1) (b) EUTMR and concerning the two latter marks, also Article 8(5) EUTMR.

 

SUBSTANTIATION of the earlier Spanish mark

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

In the present case the evidence (renewal certificate) filed by the opponent is not in the language of the proceedings.

On 27/04/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. After an extension, this time limit expired on 02/11/2015.

The opponent did not submit the necessary translation of the renewal certificate of its Spanish trade mark.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade marks No 892 125 and No 892 075.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

However for reasons of procedural economy, the Opposition Division will not undertake an examination of the proof of use submitted, but assume that use was proven.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on two earlier trade marks, both covering identical services.

RURALVIA CAJA RURAL DEL SUR
Earlier trade mark(s)	Contested sign

1. The services

The services on which the opposition is based are the following:

Class 35: Advertising; business management; business administration; office functions.

Class 36:  Insurance; financial affairs; monetary affairs; real estate affairs.

Class 38: Telecommunications.

The contested services are the following:

Class 35: Sale, including online and via the internet (e-commerce) of foodstuffs (for human beings and animals), beverages, seeds, plants and flowers.

Class 41: Training services; Organisation of events, including in the field of wine and food, including sporting, leisure, cultural and training events; Cultural services; Entertainment.

The relevant factors relating to the comparison of the services include, inter alia, the nature and purpose of the services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

The contested sale, including online and via the internet (e-commerce) of foodstuffs (for human beings and animals), beverages, seeds, plants and flowers allow consumers to satisfy different shopping needs in one place and are usually directed at the general consumer. They can take place in a fixed location, such as a department store, supermarket, boutique or kiosk, or in the form of non-shop retailing, such as through the internet, by catalogue or mail order.

The earlier advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. The nature and purpose of advertising services are fundamentally different from the provision of many other services, especially also to the sale of foodstuffs, beverages, seeds, plants and flowers which serves to satisfy completely different needs of the customers.  Therefore, advertising is dissimilar to the contested services.

The contested services are furthermore dissimilar to the earlier business management services. Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. Therefore the purposes of the services under comparison are clearly different. Moreover, they are neither complementary nor in competition. Finally the services concerned would not normally be provided by the same undertakings, since the fields of activity are very different. In conclusion, the Opposition Division considers that the services are dissimilar.

The same holds true with respect to the earlier business administration services. Those services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by inter alia employment agencies, auditors and outsourcing companies. Therefore the purposes of the services under comparison are clearly different. Moreover, they are neither complementary nor in competition. Finally the services concerned would not normally be provided by the same undertakings, since the fields of activity are very different. In conclusion, the Opposition Division considers that the services are dissimilar.

The earlier office functions services are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing, administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment. Therefore the purposes of the services under comparison are clearly different. Moreover, they are neither complementary nor in competition. Finally the services concerned would not normally be provided by the same undertakings, since the fields of activity are very different. In conclusion, the Opposition Division considers that the services are dissimilar.

Furthermore the other services covered by the earlier rights in Classes 36 and 38 are also dissimilar to the contested services in Class 35.

Providing insurance services consists of accepting liability for certain risks and respective losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingency occurs, such as death, accident, sickness, breaking of a contract and, in general, any event capable of causing damages. Financial affairs and monetary affairs consist of the provision of all those services carried out for financial, monetary or commercial purposes concerning the receiving, lending, exchanging, investing and safeguarding of money, issuing of notes and transacting of other financial business. Real estate affairs comprise real estate property management and evaluation, and real estate agency services, as well as the consultancy and provision of information related thereto. This mainly involves finding a property, making it available for potential buyers and acting as an intermediary. The earlier telecommunications services in Class 38 are those that allow people to communicate with one another by remote means.

All of those services in Class 36 and 38 are clearly dissimilar to the contested sale services in Class 35. They have a different purpose and are neither complementary nor in competition. Finally the services concerned would not normally be provided by the same undertakings, since the fields of activity are very different. In conclusion, the Opposition Division considers that the services are dissimilar.

Contested services in Class 41

The contested training services are dissimilar to advertising services in Class 35. They have no common link and are directed at a completely different public. They also have a completely different purpose, as training services are meant to improve the knowledge or the skills of people, whereas advertising services are directed at the sale of goods or services.

The contested training services are further dissimilar to business management and business administration and office functions services of the earlier right, as they have a different purpose and are neither complementary nor in competition. Those services concerned would also not normally be provided by the same undertakings, since the fields of activity are very different. In conclusion, the Opposition Division considers that the services are dissimilar.

The contested training services are also dissimilar to the earlier services in Classes 36 and 38. Their purpose is clearly different, and they are neither complementary nor in competition. There is no link between the services under comparison and they would clearly normally be provided by different undertakings.

The contested organisation of events, including in the field of wine and food, including sporting, leisure, cultural and training events also does have a clearly different purpose as the opponent’s services in Classes 35, 36 and 38 (see above), and they are neither complementary nor in competition. There is no link between the services under comparison and they would clearly normally be provided by different undertakings. Therefore these services are considered dissimilar.

 

The same considerations apply to the remaining contested services cultural services; entertainment which are also clearly dissimilar to all the opponent’s services. They consist of any (cultural) activity which provides a diversion or permits people to amuse themselves in their leisure time.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the  services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the services cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the [applicant][holder] establishes due cause for the use of the contested trade mark.

1. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation and arguing that the signs are similar and that consumers will establish a link between the trade marks because of the similarities between them, the opponent did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

Even though consumers may or are likely to establish a link between the two trade marks, in the sense, for example, that the contested trade mark would bring the earlier trade mark to the minds of consumers, it does not follow automatically that the former will take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 71).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent merely claims that use of the contested trade mark would take unfair advantage of, and/or be detrimental to, the distinctive character or repute of the earlier trade mark. The circumstances described as being ‘detrimental to the repute’, ‘detrimental to the distinctive character’, or taking ‘unfair advantage of the distinctive character or repute of the earlier trade mark’, are in fact very different from each other. In its submissions, the opponent refers to them without any distinction, treating the whole as an unavoidable effect of the similarity of the signs and the alleged reputation of the earlier trade mark. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade mark, the opposition is considered not well founded under Article 8(5) EUTMR. and has to be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Peter QUAY

Karin KLÜPFEL

Julia SCHRADER

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.