OPPOSITION No B 2 662 602
Grisea Matter, Inc. 1810 E. Sahara Avenue, Suite 100 Las Vegas, Nevada 89104 Nevada, United States of America (opponent), represented by Durán – Corretjer, S.l.p. Còrsega, 329 (Pº de Gracia/Diagonal) 08037 Barcelona, Spain (professional representative)
a g a i n s t
Sirap-Gema S.p.A., Via Industriale 1/3 25028 Verolanuova (BS) Italy (applicant), represented by Botti & Ferrari S.r.l., Via Cappellini, 11, 20124 Milano, Italy (professional representative).
On 20/03/2017, the Opposition Division takes the following
1. Opposition No B 2 662 602 is rejected in its entirety:
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 748 511, the word mark ‘FRUITWALL’, namely against all the goods in Classes 20 and 21.
The opposition is based on European Union trade mark registration No 13 146 171, the word mark ‘FRUITWALL’. 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 goods on which the opposition is based are the following:
Class 20: Shelves
The contested goods are the following:
Class 20: Receptacles, Containers, Trays and Trays, not of metal; Trays for the packaging of food; transparent food trays made from plastics or foamed plastics for commercial use; Egg trays made of plastics; Plastic boxes for packing food; Packaging containers based on or principally of plastics; Plastic packaging components for containers.
Class 21: Receptacles, holders, Dishes and trays not of metal; Trays for the packaging of food; Trays as packings for complete meals; Plastic boxes for packing food; Foamed plastic trays for food; Food cooking vessels; Containers for foodstuffs and beverages; Heat-insulated containers; Heat-insulated containers; Thermally insulated containers for food.
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.
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 contested goods are all sorts of containers, holders, trays, dishes and boxes classified in Class 20 or in Class 21. The opponent argues that the contested goods share the purpose of storing with the opponent’s shelves, moreover that the purpose of storing goods is also implied for products used for packaging or to hold things.
However, this reasoning is too generalised.
A shelf is a flat length of wood or rigid material, attached to a wall or forming part of a piece of furniture, that provides a surface for the storage or display of objects. A container is an object that can be used to hold or transport something. A receptacle is, equally, an object or space used to contain something. A tray is a flat, shallow container with a raised rim, typically used for carrying food and drink, or for holding small items. [source: https://en.oxforddictionaries.com/ ]
The opponent’s goods are for fixed storage, display, while the contested goods aim at holding, containing other goods, also with a view of being able to carry them from one place to another. If the opponent’s broad reasoning were to be taken into account, any product that is able to hold, contain another one would be similar to shelves. However, the producers of shelves are not commonly producing all types of containers: shelves are manufactured by companies specialising in building furniture or storage systems. While the contested containers can also be displayed on shelves and may even be sold in furniture shops, it is unlikely that consumers would assume that these accessories are produced by the same companies manufacturing furniture.
For some of the contested goods, it is explicitly specified that they aim at general packaging, packing or storing food items and beverages, which even further removes the goods in terms of their purpose. Packaging is mainly for protecting products, here mainly food items, from damage. Some of the contested goods are furthermore explicitly for commercial use. Even if the packaged goods are stored on shelves, this is insufficient to find similarity. Consumers would not think that the responsibility for manufacturing the shelves displaying the packaged goods lies with the same company which produces the packaging.
Consequently, the goods 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 goods 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 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
Cynthia DEN DEKKER
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.