OPPOSITION No B 2 772 112
Emsor S.A., Isabel Colbrand 10-12. edif. Alfa III. Oficina 138, 28050 Madrid, Spain (opponent), represented by Jaudenes Abogados, C/ Maestro Serrano 10, 28290 Las Rozas, Madrid, Spain (professional representative)
a g a i n s t
Capita plc, 71 Victoria Street, London SW1H 0XA, United Kingdom (applicant), represented by Irwin Mitchell LLP, 40 Holborn Viaduct, London EC1N 2PZ, United Kingdom (professional representative).
On 26/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 772 112 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 goods and services of European Union trade mark application No 15 576 572 for the word mark ‘Emson’, namely against all the goods in Class 9. The opposition is based on Spanish trade mark registration No M 2 343 256 for the figurative mark ‘’. 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 goods
The services on which the opposition is based are the following:
Class 39: Storage, warehousing and distribution of all types of medical equipment.
The contested goods are the following:
Class 9: Data processing software in relation to death registry records.
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.
By their nature goods are generally dissimilar to services. They can, however, be complementary. Services can also have the same purpose and thus be in competition with goods. It follows that under certain circumstances similarity between goods and services can be found.
In the present case, the contested data processing software in relation to death registry records in Class 9 is a specific kind of software. On the other hand, the opponent’s mark covers specific services, namely storage, warehousing and distribution of all types of medical equipment in Class 39.
Storage and warehousing services merely refer to services whereby a company’s or any other person’s goods are kept in a particular place for a fee. Those services are not similar to any kind of goods, including any of the goods that may be stored (judgments of 07/02/2006, T-202/03, Comp USA, EU:T:2006:44; 22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 32 and decision of 07/01/2013, R 1006/2012-G, Pionono (fig.), § 38).
Distribution services in Class 39 must be understood as physical distribution of certain goods, more closely as transport of goods from one place to another (by rail, road, water, air or pipeline) and services necessarily connected with such transport.
The nature and purpose of the contested goods and the opponent’s services have nothing in common. Even if data processing software in relation to death registry records could be connected to medical equipment indirectly, namely in the sense that the latter may be used to confirm the death of a person, which fact could be indicated later on in the records of civil registration by means of specific software, this far-fetched connection does not render the nature or purpose of those goods similar, and is even less suitable to support the similar nature or purpose of the contested goods and of services related to the storage and/or distribution of medical equipment.
The here compared goods and services are also not complementary. Goods or services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgments of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). In the present case the earlier services are not essential or important for the contested goods.
The producers/service providers, distribution channels and relevant public of the goods and services at issue are also dissimilar. Further, they are not in competition with each other.
Therefore, the contested goods, namely data processing software in relation to death registry records are dissimilar to the opponent’s services, namely storage, warehousing and distribution of all types of medical equipment.
- 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 compared 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
|
Martin EBERL |
Alexandra APOSTOLAKIS | Saida CRABBE |
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.