OPPOSITION No B 2 749 706
Avenue Stores, LLC, 365 West Passaic Street, Suite 230, Rochelle Park, New Jersey 07662, United States of America (opponent), represented by J.E. Dias Costa, Lda., Rua do Salitre, 195, 1269-063 Lisboa, Portugal (professional representative)
a g a i n s t
Ana Avenue online services GmbH, Liechtensteinstraße 25/DG, 1090 Wien, Austria (holder), represented by Christian Tuscher, Schottenring 14, 1010 Wien, Austria (professional representative).
On 22/06/2017, the Opposition Division takes the following
1. Opposition No B 2 749 706 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the services of international registration designating the European Union No 1 295 766 for the word mark ‘ANA AVENUE’, namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 10 254 514 for the word mark ‘AVENUE’. 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 services
The services on which the opposition is based are the following:
Class 35: Online retail store services featuring clothing, outerwear, footwear, handbags, jewelry, writing instruments, fragrances and accessories.
The contested services are the following:
Class 35: Provision of advertising space, provision of computerised advertising services, provision of space on web-sites for advertising goods and services, providing and rental of advertising space on the internet.
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 opponent argues that the services are identical, as they are all services rendered online that target the general public and therefore they have the same nature, purpose, method of use (provision of space on web-sites for advertising goods and services) and distribution channels (all these goods will be sold through the same type of website) and the services will be rendered by the same type of entity, such as information technology companies.
In the view of the Opposition Division, the mere fact that services have in common that they are provided online does not imply any identity as regards the relevant factors relating to the comparison.
The contested provision of advertising space, provision of computerised advertising services, provision of space on web-sites for advertising goods and services, providing and rental of advertising space on the internet are aimed at providing advertising services to assist others 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. These services are provided by specialised companies, which study their clients’ needs and provide all the information and advice necessary for marketing and developing a tailored strategy regarding the advertising of their clients’ products and services. Contrary to the opponent’s argument, such services are provided not by information technology companies, but rather by advertising or media agencies.
The services on which the opposition is based are retailing services, provided online and featuring different types of goods. Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale. Online retail services are a form of retail services that allows consumers to buy goods or services directly from a seller over the internet.
In the present case, the earlier services do not have anything in common with the contested services, since they have different natures and purposes, will not be provided by the same companies or through the same channels and will not target the same relevant public. They are not in competition with each other or complementary. The fact that online retail websites commonly feature third party advertising banners is irrelevant for a finding of similarity, as the undertaking running the online store is not involved in the provision of the advertising space as a service to others. In addition, the relevant sections of the public are not the same, because advertising services target mainly other businesses, whereas online retail services target the public at large.
Therefore, the services at issue are dissimilar.
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.
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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Jorge ZARAGOZA GOMEZ
Ana MUÑIZ RODRÍGUEZ
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.