OPPOSITION No B 2 646 134

Pilot Air Freight Corporation, N Middletown Road 314, Lima, PA, 19037, United States of America (opponent), represented by Marks & Clerk LLP, Atholl Exchange 6 Canning Street, Edinburgh, Scotland EH3 8EG, United Kingdom (professional representative)

a g a i n s t

KPMG LLP, 15 Canada Square, London E14 5GL, United Kingdom (applicant), represented by Simkins LLP, Lynton House 7-12 Tavistock Square, London WC1H 9LT, United Kingdom (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 646 134 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 in Class 35 and all the services in Class 36 of European Union trade mark application No 14 650 162. The opposition is based on European Union trade mark registrations No 9 308 685 and No 9 309 071. The opponent invoked Article 8(1)(b) EUTMR.

EUTM No 9 308 685 EUTM No 9 309 071
Earlier trade marks	Contested sign

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 EU trade marks on which the opposition is based.

In the present case, the contested trade mark was published on 27/10/2015.

The two earlier EU trade marks were registered on 03/02/2011. Therefore, the request for proof of use is inadmissible.

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.

1. The services

In relation to both earlier marks, the services on which the opposition is based are the following:

Class 36:        Customs brokerage services.

After limitation, the contested services are the following:

Class 35:        Business consulting, advice and information relating to electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; outsourcing services [business assistance]; analysis of workforces; analysis of workforce performance; business management planning and development, business risk management; business advice on business ventures and business acquisitions, starting of companies and internal company investigations; business investigations and business advice on insolvent companies; market studies; auditing services; investor auditing services; data analytics relating to commercial affairs, business, electronic commerce and enterprise resource planning; data analysis services relating to commercial affairs, business, electronic commerce and enterprise resource planning; data modelling services relating to commercial affairs, business, electronic commerce and enterprise resource planning; data collection, compilation and systemisation services; compilation of computer data-bases; data management services; the aforesaid services also being provided online via global computer networks and/or the Internet; none of the aforesaid services including or relating to customs brokerage services.

Class 36:        Pension services; provision of pension information; pension advisory services; pension planning services; money saving advice; financial analysis; financial research and information services; investment analysis; advice on creditor and debtor control investments, grants and financing of loans; tax reporting services (not accounting); corporate finance services including advising on financial affairs, financial evaluation and financial consultancy; advisory services relating to credit and debt control; financial investigation; business appraisals for financial valuation; financial risk assessments; analysis of financial information; supply of online information relating to financial affairs; investment services; financial investment services; investment management services; investment, grants and financing of loans; investment asset management; arranging investments, in particular capital investments, financing services and insurance; advisory services related all the aforesaid services; the aforesaid services also being provided online via global computer networks and/or the Internet; none of the aforesaid services including or relating to customs brokerage services.

The terms ‘in particular’ and ‘including’, used in the applicant’s list of services in Class 36, indicate that the specific services are only examples of items included in the categories and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of services in Class 35 to show the relationship of individual services with broader categories, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.

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.

Before proceeding to the comparison, it is useful to describe the opponent’s services. Customs brokerage services, being classified in Class 36, concern the financial aspect of the clearing of goods through customs barriers for importers and exporters. These services are provided by (licenced) customs brokers, who must comply with certain requirements before the local customs and who have specific professional knowledge and expertise in relation to customs law, tariffs, import and export regulations, customs classification, trade documentation etc. Customs brokers act as professional agents for an importer or exporter and are paid customs-brokerage fee. These services consist of the preparation of financial documents and/or electronic submissions, the calculation and payment of taxes, duties and excises. They are in principle directed at other businesses, such as freight forwarders, shipping lines, trade authorities and other customs brokerage firms.

Contested services in Class 35

The contested services in this class are aimed at supporting or helping other businesses to do or improve their business, excluding services that concern customs brokerage. They are in principle directed at the professional public. These services are mainly provided by business management consultants, human resources consultants, chartered accountants, licenced auditors, market researchers and data analysts. Business consulting includes the provision of commercial or management information, analysis and modelling of data related thereto, facilitating business contacts, finding outsourced service providers, studying consumer trends etc. Business auditing involves the evaluation of a variety of business activities; it encompasses a review of organisational structures, management, processes etc. Data management services are essentially clerical operations entailing the collection, compilation and systematisation of data into computer databases.

Admittedly, there is a certain connection between the contested services in this class and the opponent’s customs brokerage services in Class 36, insofar as they can be seen as services to support other businesses. However, it has to be borne in mind that the opponent’s services are limited to very specific activities which are clearly distinct, in nature and purpose, from the contested services as detailed above. This distinction also comports with the reality of the marketplace where business management consulting, auditing or clerical functions are provided by agencies that do not normally provide customs brokerage. They operate in different fields of business. The mere fact that they can be directed at the same public is not sufficient in itself to lead to a finding of similarity. Furthermore, they are neither complementary nor in competition. Therefore, all of the contested services in Class 35 are dissimilar to the opponent’s services in Class 36.  

Contested services in Class 36

The contested services in this class are specific types of financial services, such as those dealing with pensions, savings, loans, investments, assets, grants, corporate finance, and credit/debit control, none of which include, or relate to, customs brokerage. They are commonly provided by banks, savings institutions, investment funds and other operators in the finance industry. In addition, the contested services encompass a range of information, research, analysis, evaluation and consultancy services, all rendered in direct connection with financial/monetary affairs.

Although it is true that the opponent’s customs brokerage services involve monetary transactions such as the sending/receiving of money for tax and duty payments, the contested list of services, after the applicant’s limitation, does not contain financial services in general.

The contested services at stake have no relevant commonalities with the opponent’s services. The distinction is emphasised by the fact that customs brokers do not provide pension schemes, money saving instruments, investment, loans, creditor or debtor control, business appraisals, etc. Even if the activities of a customs broker may require external funding that does not automatically mean that they are complementary to the contested services. Rather, customs brokers would use the services of a financial institution as ancillary services for financing their operations or transferring the payments on behalf of their customers.

Therefore, the services at issue have clearly different natures and purposes, as explained above. They are not provided by the same undertakings and they do not coincide in the distribution channels. The mere fact that the services in question can be directed at the same public is insufficient in itself to support a finding of similarity. Furthermore, they are neither complementary nor in competition. Therefore, all of the contested services in Class 36 are dissimilar to the opponent’s services in Class 36.

The opponent refers to a previous decision of the Office to support its arguments. 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, the previous decision referred to by the opponent, namely decision of 03/04/2014, R 1040/2013-1 – ‘Union Bank of India’ (Fig.) / ‘Union Investment’ (Fig.) et al., where customs brokerage services were found as falling in the broad category of financial affairs, is not relevant to the present proceedings. As set out above, after limitation, the contested list of services does not cover the broad category of financial services; thus, the situations are not comparable. Therefore, the opponent’s argument in that regard must be set aside.

2. 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 in question 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

Ignacio IGLESIAS ARROYO

Patricia LOPEZ FERNANDEZ DE CORRES

Gueorgui IVANOV

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.