OPPOSITION No B 2 636 242
Choice Car, S.A., Avenida Vasco da Gama, 780, 4430-247, Vila Nova de Gaia, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)
a g a i n s t
Balyo SA, 240 rue de la motte, 77550 Moissy-Cramayel, France (applicant), represented by Cabinet Plasseraud, 66, rue de la Chaussée d'Antin, 75440 Paris Cedex 09, France (professional representative).
On 16/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 581 372 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 648 381 ‘DRIVEN BY BALYO’. The opposition is based on, inter alia, European Union trade mark registration No 14 035 034 . The opponent invoked Article 8(1)(b) EUTMR.
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 more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 14 035 034.
Preliminary remark
In the opposition notice filed on 08/01/2016, the opponent indicated that the opposition is directed against part of the goods and services of the contested mark but it listed all of the goods and services. Then, in its further submission of facts filed on the same day, it indicated a limited list of the contested goods and services. For the sake of clarity, the Opposition Division will overcome this contradictory information by assuming that the opposition is directed against all the goods and services.
- The goods and services
The services on which the opposition is based are the following:
Class 39: Car rental.
In the opposition stage, the applicant limited the list of the contested goods in Class 12, of which the opponent was duly informed. In the absence of a reply from the opponent, it was assumed that the opposition is maintained. Accordingly, the contested goods and services are the following:
Class 7: Moving and handling equipment.
Class 12: Vehicles; Automatic guided vehicles; Unmanned vehicles, none of the aforesaid goods relating to the transport of persons.
Class 37: Machinery installation, maintenance and repair.
Class 39: Packaging and storage of goods.
Class 42: Research and development of new products.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or 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.
It must also be taken into account that the goods and services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification (20/09/2012, T-445/10, Eco-pack, EU:T:2012:454, § 19).
Contested goods in Class 7
The contested moving and handling equipment covers machines that are used in various fields of industry. They are goods that are manufactured by specialist companies and are sold at dedicated outlets. On the other hand, the opponent’s car rental has the purpose of providing vehicle usually for short term, for example during holidays. As such, the nature, purpose and method of use of the goods and services under comparison are different. Furthermore and based on all the foregoing, the goods and services in question are neither complementary nor in competition. Therefore, they must be considered dissimilar .
Contested goods in Class 12
The contested vehicles; automatic guided vehicles; unmanned vehicles, none of the aforesaid goods relating to the transport of persons cover various types of vehicles used for transportation. In contrast, the opponent’s car rental covers services that are offered by specialist companies who purchase vehicles and then rent them out to customers. Its purpose is to provide vehicle usually for short term, for example during holidays. Manufacturers of vehicles do not normally operate on the market as providers of rental services, which also means the goods and services in question are neither complementary nor in competition. Indeed, the relationship with consumers of cars is usually in the hand of specialized dealers whose goal is the sale of vehicles. Accordingly, a rental is usually a temporary service whereas the sale of a vehicle is a permanent deal. (16/05/2013, T‑104/12, ECLI:EU:T:2013:256, 58 §). The said goods and services are, therefore, dissimilar.
Contested services in Class 37
The contested machinery installation, maintenance and repair are services offered by specialist undertakings. Again, these have nothing to do with the opponent’s car rental as their purpose and methods of use are different and providers of these latter services do not usually engage in providing the contested services. The services compared are offered via different channels and they are neither complementary nor in competition. They are, therefore, dissimilar.
Contested services in Classes 39 and 42
The contested packaging and storage of goods in Class 39 have clearly different purposes and different methods of use than the opponent’s car rental. Furthermore, these services are neither complementary nor in competition with each other. The same conclusions must be drawn in relation to the contested research and development of new products in Class 42. In summary, all of these contested services are dissimilar to the opponent’s car rental.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
The opponent has also based its opposition on earlier Portuguese trade mark No 435 468 registered for car rental in Class 39. Since this mark covers the same services as the opponent’s EUTM already compared in section a) above, the outcome could not have been different than the one reached above, since the services of the national mark would also be clearly dissimilar to the contested goods and services.
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
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Marianna KONDÁS |
Ferenc GAZDA |
Oana-Alina STURZA
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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.