OPPOSITION No B 2 697 814
S.C. Anchor Grup S.A, Bd. Timișoara nr 26Z, Clădirea Anchor Plaza, etaj 11, corp B, biroul 11B01 și etaj 12, corp A, biroul 12A01, sector 6, 061331 Bucharest, Romania (opponent), represented by Patentmark s.r.l. Bucuresti, str. Dr. N. Turnescu, nr. 2, sector 5, 050467 Bucharest, Romania (professional representative)
a g a i n s t
Ramón Freixa Fontanals, Carrer Xiprer, 46, 08230 Matadepera, Spain (applicant), represented by Isern Patentes y Marcas s.l., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative).
On 22/03/2017, the Opposition Division takes the following
1. Opposition No B 2 697 814 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 and services of European Union trade mark application No 13 801 311, namely against all the services in Class 35. The opposition is based on Romanian trade mark registration No 114 906. The opponent invoked Article 8(1)(b) EUTMR.
Earlier trade mark
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: Advertising; business management; business administration; office functions.
The contested services are the following:
Class 35 Retailing and wholesaling via global communications networks of goods of poly(methyl methacrylate) or poly(ethyl acrylate), being hot formed, for use in the home, orthopaedics, building construction, land vehicles and decoration of homes, aquariums, terrariums, urns, protective elements for workers, display units, placards, elements for placards, display cases, display cases for collectibles, sound-insulating panels, room dividers, safety screens, sides of sports swimming pools, skylights, covers, windscreens, racks, shelves, table supports, sculptures, pedestals, chairs, components for chairs, bathtubs, tanning booths, supports and dividers for goods in shop windows or supermarket counters, anti-vandalism protection for shop windows, street furniture, display units, paperweights, engraved or printed memorial plaques, price tag holders, photograph holders, exhibition sites at trade fairs (stands).
Earlier Romanian trade mark No 114 906 is registered for the entire class heading of Class 35 of the Nice Classification. It was filed on 14/01/2011. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the Office considers that its scope of protection includes both the natural and usual meaning of the general indications in the heading and the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9th edition. Consequently, in addition to the abovementioned advertising; business management; business administration; office functions, the earlier mark also covers the entire alphabetical list of services in Class 35, which includes auctioneering and rental of vending machines.
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 services are retailing and wholesaling of goods of poly(methyl methacrylate) or poly(ethyl acrylate), being hot formed, for use in various fields. These services may be defined as the action or business of selling goods or commodities in relatively small quantities for use or in large quantities. That consists in the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods. Sales services allow consumers to satisfy different shopping needs at one stop and, in the present case, they target the professional consumer. They can take place in a fixed location or in the form of non-shop retailing, that is, through the internet or by catalogue or mail order.
On the other hand, the opponent’s earlier right covers different services in Class 35.
Advertising services 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. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc.
Business administration services consist of organising people and resources efficiently to direct activities towards common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation.
Business management services are usually rendered by companies specialising in this specific field 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 involve activities such as business research and appraisals, cost price analysis and organisation consultancy. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as how to allocate financial and human resources efficiently, how to improve productivity, how to increase market share, how to deal with competitors, how to reduce tax bills, how to develop new products, how to communicate with the public, how to do marketing, how to research consumer trends, how to launch new products, how to create a corporate identity, etc.
Office functions cover services aimed at performing day-to-day operations that are required by a business to achieve its commercial purpose.
Auctioneering covers services rendered by specialised companies (auction agencies) that mediate the process of buying and selling goods or services by offering them up for bidding, taking bids and then selling the item to the highest bidder.
Rental of vending machines consists of providing third parties with the right to use the goods in exchange for an amount of money to be paid by the users.
The contested services are different in their nature and purpose from the opponent’s services. These services have different distribution channels and target different publics. They are neither complementary nor in competition. The fact that the contested services might use the opponent’s services is insufficient for a finding of similarity between them. Therefore, the contested services are dissimilar to those of the opponent, including the services in the alphabetical list of services in Class 35 covered by the earlier mark.
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 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
Loreto URRACA LUQUE
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.