OPPOSITION No B 2 717 166
Jose Luis Marro Seivane, C/ Munic, 23 Bajos, 08005 Barcelona, Spain and Andrea Bacchi, C/ Munic, 23 Bajos, 08005 Barcelona, Spain (opponents), represented by Isern Patentes Y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)
a g a i n s t
Alle Tattoo Di Bonacorsi Alessandro, Via Limidi, 1110, 41019 Soliera (MO) – Frazione Limidi, Italy (applicant), represented by Brunacci & Partners S.R.L, Via Scaglia Est, 19-31, 41126 Modena, Italy (professional representative).
On 16/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 717 166 is rejected in its entirety.
2. The opponents bear the costs, fixed at EUR 300.
REASONS:
The opponents filed an opposition against all the goods and services of European Union trade mark application No 15 058 159 for the figurative mark. The opposition is based on Spanish trade mark registration No 3 594 868 for the figurative mark. The opponents 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 goods and services
The services on which the opposition is based are the following:
Class 35: Retail and wholesale services in shops and via Internet of tools, medical apparatus and instruments, medical beds and furniture, clothing for medical use, dental equipment, dressings, bandages, medical products, sanitizing wipes, bibs of paper and disposable products.
The contested goods and services are the following:
Class 25: Rainproof clothing; clothing of imitations of leather; leather clothing; clothing for gymnastics; leisurewear; sportswear; suits; ceremonial clothing for women; bathrobes; clothing; bandanas [neckerchiefs]; bermuda shorts; caps [headwear]; underwear; bikinis; blazers; bodies [clothing]; boleros; bomber jackets; stocking suspenders; footwear; training shoes; leisure shoes; stockings; socks; breeches; swimming trunks; shirts; nighties; bodices [lingerie]; tank tops; windproof clothing; hats; coats; hoods [clothing]; cardigans; belts [clothing]; tights; tutus; hats; sundresses; layettes [clothing]; swimming costumes; masquerade costumes; beachwear; neckties; swimming caps; headbands [clothing]; pocket squares; sweat shirts; foulards [clothing articles]; gabardines [clothing]; knee-high stockings; boot uppers; jackets [clothing]; blazers; heavy jackets; jackets (stuff -) [clothing]; blousons; skirts; aprons [clothing]; gloves [clothing]; denim jeans; underwear for men; jumpers; leg warmers; lingerie; hosiery; maillots; sweaters; pelerines; skorts; waistcoats; running shorts; trousers; mules; ear muffs [clothing]; beach wraps; furs [clothing]; dickies; pyjamas; polo shirts; sun dresses; ponchos; brassieres; shawls; sashes for wear; shorts; dinner jackets; topcoats; petticoats; slips [undergarments]; fur stoles; footwear soles; skirt suits; tee-shirts; tops [clothing]; turbans; combinations [clothing]; gymsuits; uniforms; veils [clothing]; robes; visors [headwear]; balaclavas.
Class 28: Christmas trees of synthetic material; doll accessories; swings; toy animals; stuffed toy animals; games (apparatus for -); gymnastic articles; kites; toy bows and arrows; toy weapons; articles of clothing for toys; articles for gymnastics and sport; and sporting goods; cases for game accessories; cases for scale toy figures; sports equipment; fitness exercise machines; dolls; marbles; ninepins; ninepins; blocks (building -) [toys]; playing balls; soap bubbles [toys]; bags specially adapted for carrying sports equipment; hand puppets; cups for dice; kaleidoscopes; Christmas stockings; card games; collectable playing cards; children's playhouses; doll houses; ride-on toys; inflatable ride-on toys; rocking horses; mobile telephones for children; headgear for dolls; sling shots [sports articles]; doll costumes; dice; ornaments for Christmas trees, except illumination articles and confectionery; flying discs [toys]; collectible toy figurines; toys; wind-up toys; musical toys; toys for domestic pets; children's playthings; rattles [playthings]; games; amusement machines, automatic and coin-operated; board games; building games; parlour games; gloves for games; scale model kits [toys]; paddings (protective -) [parts of sports suits]; puppets; costume masks; theatrical masks; toy masks; sports masks; miniature toys; mobiles [toys]; scale model vehicles; models being toys; scooters [toys]; teddy bears; balls for games; balls for games; plush toys; fanciful character toys; quoits; body protectors for sporting purposes; stuffed puppets; collectable puppets, built to scale; puzzles; rackets; jack-in-the-boxes; doll playsets; games sets for action figures; skateboards; play mats incorporating toys for babies (playthings); tops (spinning -) [toys]; toy vehicles; radio-controlled toy vehicles.
Class 44: Beauty consultancy; consultancy in relation to beauty and body care; providing of information in relation to massage; massage; rental of skin care equipment; cosmetic services; skin tanning service for humans for cosmetic purposes; services in relation to beauty care; consultancy services relating to beauty; advisory services relating to beauty treatment; beauty salons; manicuring; health and beauty services for human beings; solarium services; cosmetic facial and body treatment services; tattooing; beauty care; tattooing of pets for identification purposes.
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.
Contested goods in Class 25
The opponents’ Class 35 retail and wholesale services in shops and via Internet of tools, medical apparatus and instruments, medical beds and furniture, clothing for medical use, dental equipment, dressings, bandages, medical products, sanitizing wipes, bibs of paper and disposable products and the contested rainproof clothing; clothing of imitations of leather; leather clothing; clothing for gymnastics; leisurewear; sportswear; suits; ceremonial clothing for women; bathrobes; clothing; bandanas [neckerchiefs]; bermuda shorts; caps [headwear]; underwear; bikinis; blazers; bodies [clothing]; boleros; bomber jackets; stocking suspenders; footwear; training shoes; leisure shoes; stockings; socks; breeches; swimming trunks; shirts; nighties; bodices [lingerie]; tank tops; windproof clothing; hats; coats; hoods [clothing]; cardigans; belts [clothing]; tights; tutus; hats; sundresses; layettes [clothing]; swimming costumes; masquerade costumes; beachwear; neckties; swimming caps; headbands [clothing]; pocket squares; sweat shirts; foulards [clothing articles]; gabardines [clothing]; knee-high stockings; boot uppers; jackets [clothing]; blazers; heavy jackets; jackets (stuff -) [clothing]; blousons; skirts; aprons [clothing]; gloves [clothing]; denim jeans; underwear for men; jumpers; leg warmers; lingerie; hosiery; maillots; sweaters; pelerines; skorts; waistcoats; running shorts; trousers; mules; ear muffs [clothing]; beach wraps; furs [clothing]; dickies; pyjamas; polo shirts; sun dresses; ponchos; brassieres; shawls; sashes for wear; shorts; dinner jackets; topcoats; petticoats; slips [undergarments]; fur stoles; footwear soles; skirt suits; tee-shirts; tops [clothing]; turbans; combinations [clothing]; gymsuits; uniforms; veils [clothing]; robes; visors [headwear]; balaclavas are not similar.
Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.
Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.
Indeed, the clothing for medical use referenced in the opponents’ retail and wholesale services in shops and via Internet is usually classified in Class 10 of the Nice Classification, as opposed to all the contested Class 25 goods. The same applies to the dressings referenced in the opponents’ retail and wholesale services in shops and via Internet, which are usually classified in Class 5 of the Nice Classification.
Contested goods in Class 28
The opponents’ Class 35 retail and wholesale services in shops and via Internet of tools, medical apparatus and instruments, medical beds and furniture, clothing for medical use, dental equipment, dressings, bandages, medical products, sanitizing wipes, bibs of paper and disposable products and the contested Christmas trees of synthetic material; doll accessories; swings; toy animals; stuffed toy animals; games (apparatus for -); gymnastic articles; kites; toy bows and arrows; toy weapons; articles of clothing for toys; articles for gymnastics and sport; and sporting goods; cases for game accessories; cases for scale toy figures; sports equipment; fitness exercise machines; dolls; marbles; ninepins; ninepins; blocks (building -) [toys]; playing balls; soap bubbles [toys]; bags specially adapted for carrying sports equipment; hand puppets; cups for dice; kaleidoscopes; Christmas stockings; card games; collectable playing cards; children's playhouses; doll houses; ride-on toys; inflatable ride-on toys; rocking horses; mobile telephones for children; headgear for dolls; sling shots [sports articles]; doll costumes; dice; ornaments for Christmas trees, except illumination articles and confectionery; flying discs [toys]; collectible toy figurines; toys; wind-up toys; musical toys; toys for domestic pets; children's playthings; rattles [playthings]; games; amusement machines, automatic and coin-operated; board games; building games; parlour games; gloves for games; scale model kits [toys]; paddings (protective -) [parts of sports suits]; puppets; costume masks; theatrical masks; toy masks; sports masks; miniature toys; mobiles [toys]; scale model vehicles; models being toys; scooters [toys]; teddy bears; balls for games; balls for games; plush toys; fanciful character toys; quoits; body protectors for sporting purposes; stuffed puppets; collectable puppets, built to scale; puzzles; rackets; jack-in-the-boxes; doll playsets; games sets for action figures; skateboards; play mats incorporating toys for babies (playthings); tops (spinning -) [toys]; toy vehicles; radio-controlled toy vehicles are not similar.
Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.
Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.
Indeed, the tools, medical apparatus, instruments and clothing for medical use referenced in the opponents’ retail and wholesale services in shops and via Internet are usually classified in Class 10 of the Nice Classification, as opposed to all the contested Class 28 goods. The same applies to the dressings and bandages referenced in the opponents’ retail and wholesale services in shops and via Internet, which are usually classified in Classes 5 and 10 of the Nice Classification. Furthermore, the bibs of paper and disposable products likewise referenced in the opponents’ retail and wholesale services in shops and via Internet are usually classified in Class 16 of the Nice Classification.
Contested services in Class 44
The opponents’ Class 35 retail and wholesale services in shops and via Internet of tools, medical apparatus and instruments, medical beds and furniture, clothing for medical use, dental equipment, dressings, bandages, medical products, sanitizing wipes, bibs of paper and disposable products consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop.
The contested beauty consultancy; consultancy in relation to beauty and body care; providing of information in relation to massage; massage; rental of skin care equipment; cosmetic services; skin tanning service for humans for cosmetic purposes; services in relation to beauty care; consultancy services relating to beauty; advisory services relating to beauty treatment; beauty salons; manicuring; health and beauty services for human beings; solarium services; cosmetic facial and body treatment services; tattooing; beauty care; tattooing of pets for identification purposes are all beauty, body care and cosmetic services that have different natures and purposes to all of the opponent’s Class 35 retail and wholesale services.
The relevant public will not usually coincide (consumers wishing to purchase a wide variety of goods vs consumers wishing to benefit from specific beauty, body care and cosmetic services) and the services are neither complementary (wholesale and retail services of a wide variety of goods and the provision of beauty, body care and cosmetic services do not depend on each other in order to properly function) nor are they in competition. Consequently, they are dissimilar.
- Conclusion
Article 8(1)(b) EUTMR states that ‘the trade mark applied for shall not be registered: if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’ (emphasis added).
Therefore, 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.
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 opponents are the losing party, they 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
|
Liliya YORDANOVA |
José Alexandre DE PAIVA ANDRADE TEIXEIRA |
Ewelina SLIWINSKA |
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.