OPPOSITION No B 2 591 157

La Zaragozana S.A., Ramón Berenguer IV, 1, 50007 Zaragoza, Spain (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

John Beale, 30 Monument Park, Chalgrove, Oxfordshire OX44 7RW, United Kingdom (applicant), represented by Brand Protect Limited, Suite B, 2nd Floor, Rowood House, Murdock Road, Bicester, Oxfordshire OX26 4PP, United Kingdom (professional representative).

On 26/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 591 157 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 13 864 053, namely against some of the services in Class 35. The opposition is based on European Union trade mark registration No 4 328 911 and Spanish trade mark registrations No 83 762, No 2 029 902 and No 2 029 903, in relation to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR, as well as on Spanish trade mark registration No 2 005 726, in relation to which the opponent invoked only Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON THE SUBSTANTIATION OF SPANISH TRADE MARK REGISTRATION NO 2 005 726

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be 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 shall 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 shall 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 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

In the present case the evidence filed by the opponent is not in the language of the proceedings.

On 21/10/2015 the opponent was given two months, commencing after the ending of the cooling-off period, that is, until 26/02/2016, to submit the required evidence and respective translations. This time limit was subsequently extended until 13/04/2016.

The Opposition Division notes that the opponent did not submit the necessary translation of the extract from the register submitted to substantiate earlier Spanish trade mark registration No 2 005 726.

According to Rule 19(4) EUTMIR, the Office shall 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 shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded as far as it is based on Spanish trade mark registration No 2 005 726 for the word mark ‘AMBAR, LA CERVEZA QUE TE PONE BIEN’, registered for services in Class 35. The opposition will proceed with respect to the remaining earlier rights as listed below:

European Union trade mark No 4 328 911 CERVEZAS AMBAR Spanish trade mark registration No 83 762 AMBAR Spanish trade mark registration No 2 029 902 Spanish trade mark registration No 2 029 903	AMBAR
Earlier trade marks	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.

1. The goods and services

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

European Union trade mark No 4 328 911 and Spanish trade mark registrations No 2 029 902 and No 2 029 903

Class 32: Beers

Spanish trade mark registration No 83 762

Class 32: Beers (of all kinds)

The contested services, before a limitation requested by the applicant, were the following:

Class 35: Advertising; business management; business administration; office functions; advertising, marketing, promotion or publicity services; business advice relating to franchising; business advice, assistance or information services; business consultancy in relation to the sale of franchises; business consulting relating to franchising; business management advice, assistance or information services; franchising, namely offering technical assistance for the establishment, operating of retail stores or internet stores; online advertising on computer networks; sales promotion services; mail order, wholesale, retail or internet retail services connected with the sale of beverage glassware, bottle racks; mail order, wholesale, retail or internet retail services connected with the sale of liqueurs.

However, the limitation removed the contested mail order, wholesale, retail or internet retail services connected with the sale of beverage glassware, bottle racks, liqueurs from the applicant’s list of services. Therefore, the contested services are now the following:

Class 35: Advertising; business management; business administration; office functions; advertising, marketing, promotion or publicity services; business advice relating to franchising; business advice, assistance or information services; business consultancy in relation to the sale of franchises; business consulting relating to franchising; business management advice, assistance or information services; franchising, namely offering technical assistance for the establishment, operating of retail stores or internet stores; online advertising on computer networks; sales promotion services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services with a broader category, 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 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.

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 contested advertising services (listed twice) consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

The contested marketing, promotion or publicity services and the contested online advertising on computer networks; sales promotion services are examples of advertising and marketing services intended to promote other companies’ goods by various means, as described above.

These advertising and marketing services are fundamentally different in nature and purpose from the manufacture of goods in general or, as in the present case, from the manufacture of beer. The fact that the opponent’s beer may appear in advertisements or may be promoted through various means as part of a company’s marketing strategy is insufficient for a finding of similarity. Therefore, the abovementioned contested services are dissimilar to the opponent’s goods.

The contested 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.

The contested business advice, assistance or information services; business management advice, assistance or information services are services relating to various aspects of business affairs contracted when advice and consultancy or assistance is needed.

The contested franchising, namely offering technical assistance for the establishment, operating of retail stores or internet stores, is a type of business involving the right to use a company’s business model and brand for commercial purposes. The contested business advice relating to franchising; business consultancy in relation to the sale of franchises; business consulting relating to franchising are services related to franchising that target the same relevant public.

Furthermore, the contested business administration 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.

The contested office functions are the internal day-to-day operations of an organisation, including administration and support services in the ‘back office’. They mainly involve activities that assist in the running of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing and administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment.

All these business and office-related services differ from the opponent’s goods, namely beer, as, aside from the fact that goods and services have different natures, the abovementioned contested services target different publics and have different distribution channels, methods of use and intended purposes. In addition, the goods and services in question are not complementary to each other or in competition. Therefore, they are considered dissimilar.

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 opponent’s goods are clearly dissimilar to the contested services, as concluded above, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected under this ground.

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 goods and services cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

However, the opponent also invoked Article 8(5) EUTMR in relation to the abovementioned earlier rights. Therefore, the examination of the opposition will continue with respect to Article 8(5) EUTMR.

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 shall 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 shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be 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 shall 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)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.

On 21/10/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. As stated above in the preliminary remark section, this time limit was extended until 13/04/2016.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

Therefore, in the light of the findings of this decision, the Opposition Division concludes that the opposition must be rejected in its entirety as unfounded.

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

Steve  HAUSER

Cristina CRESPO MOLTÓ

Zuzanna STOJKOWICZ

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.