OPPOSITION No B 2 327 545
Monpa, S.A., C. de Casp, 86, 08010 Barcelona, Spain (opponent), represented by Oficina Ponti, SLP, Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)
a g a i n s t
Monda International Ltd, Office C 23/F, COS Centre, 56 Tsun Yip Street, Kwun Tong
Kowloon, Hong Kong Special Administrative Region of the People's Republic of China (applicant), represented by Mazanti-Andersen, Korsø Jensen & Partnere, Amaliegade 10, 1256 København K, Denmark (professional representative)
On 03/03/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 327 545 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 services of European Union trade mark application No 12 146 321, namely against the services in Class 36. The opposition is based on Spanish trade mark registration No 2 303 542. The opponent invoked Article 8(1)(b) EUTMR.
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MONPA
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MONDA
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Earlier trade mark |
Contested sign |
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 services
The services on which the opposition is based are the following:
Class 36: Renting of flats and commercial premises.
The contested services are the following:
Class 36: Capital investment brokerage and consultations; arranging of investments; capital fund investment; bonds brokerage.
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.
The opponent argues that their services are of a similar nature as the contested services because they concern the management of money and capital. However, the renting of flats and commercial premises are a type of real estate services that mainly involve the finding a property, making it available for potential renters and acting as an intermediary. These services are not aimed at the same end-users. Consumers clearly distinguish real estate agents’ services from those of financial services like the contested capital investment brokerage and consultations, arranging of investments, capital fund investment and bonds brokerage which mainly relate to buying and selling of stocks or other securities.
Consumers do not expect a real estate agent to manage their finances and the mere fact that investments may concern the acquisition of real estate, as argued by the opponent, is not sufficient to find similarity between the services to be compared.
Any other conclusion would mean that all non-financial transactions subject to funding would be complementary to a financial service. It must therefore be concluded that these services are dissimilar even if financial services are essential or important for the use of real estate. The consumers would not attribute responsibility for both services to the same company (judgment of 11/07/2013, T-197/12, Metro, EU:T:2013:375, § 47-51).
The opponent refers to a previous decision of the Office to support its arguments regarding the similarity of the services. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, however, the previous case referred to by the opponent is not relevant to the present proceedings, because it did not contain the comparison of the same or equivalent services.
- 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 services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must 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
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Zuzanna STOJKOWICZ
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Cynthia DEN DEKKER |
Jessica LEWIS
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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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.