OPPOSITION No B 2 712 191

OpCapita Red Bidco S.à.r.l., 5, rue Guillaume Kroll, 1882 Luxembourg, Luxembourg (opponent), represented by Friese Goeden Patentanwälte PartGmbB, Widenmayerstr. 49, 80538 München, Germany (professional representative)

a g a i n s t

Naked Pizza LLC, Suite 1400A, 2200 Clarendon Blvd, Arlington, Texas 22201, United States of America (applicant), represented by Norton Rose Fulbright LLP, 3 More London Riverside, London SE1 2AQ, United Kingdom (professional representative).

On 17/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 712 191 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 14 988 372, namely against all the services in Class 43. The opposition is based on international trade mark registration No 1 157 550 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

NKD
Earlier trade mark	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 services

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

Class 35:        Retail and wholesale services as well as online or catalog mail order services for the following goods: clothing, footwear, headgear, scarves, textiles and textile goods, bed covers, table covers, leather and imitations of leather, and goods made of these materials, animal skins and hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, paper, cardboard and goods made from these materials, printed matter, bookbinding material, photographs, stationary, adhesives for stationary or household purposes, artists’ materials, paint brushes, typewrites and office requisites, instructional and teaching material, plastic materials for packaging, printers’ type, printing blocks, bleaching preparations and other substances for laundry use, cleaning, polishing scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminants, candles and wicks for lighting purposes, hand tools and implements (hand operated), cutlery, forks and spoons, side arms, razors, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission and reproduction of sound and images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment, computers, computer software, fire-extinguishing apparatus, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, musical instruments, toy instruments, rubber, gutta-percha, gum, asbestos, mica and goods made from these materials, plastics in extruded form for use in manufacture, packing, stopping and insulating material, flexible pipes, furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic, household or kitchen utensils and containers, combs and sponges, brushes and paint brushes, brush-making materials, articles for cleaning purposes, steel wool, unworked or semi-worked glass, glassware, porcelain and earthenware, ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags, padding and stuffing material, raw fibrous textile materials, yarns and threads, for textile use, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings, games, playthings, gymnastic and sporting articles, decorations for Christmas trees, tobacco, smokers’ articles, matches.

The contested services are the following:

Class 43:        Restaurant services; bar services; catering services; food takeaway services; takeaway pizza services; pizzerias.

Before proceeding with the comparison, it is useful to describe the opponent’s and the contested services. The opponent’s retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. The opponent’s wholesale services, on the other hand, offer for sale commodities in quantity, usually for resale. The goods can be purchased in a physical establishment, online or through catalogue mail order. The contested services involve serving food and drinks directly for consumption.

Consequently, the natures, intended purposes and methods of use of the opponent’s retail and wholesale services as well as online or catalog mail order services for the goods listed and of the contested services are different. These services are not complementary in the sense that one is indispensable (essential) or important (significant) for the use of the other. Nor are they in competition, as they cannot be substituted for each other and they do not serve similar purposes. Therefore, the contested services are dissimilar to all of the opponent’s services.

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 services 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

Richard BIANCHI

Carlos MATEO PÉREZ

Inés GARCÍA LLEDÓ

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.