OPPOSITION No B 2 747 239
TMK A/S, Skautrupvej 16, 7500 Holstebro, Denmark (opponent), represented by Focus Advokater, Englandsgade 25, 5100 Odense C, Denmark (professional representative)
a g a i n s t
Zurbrüggen Wohn-Zentrum GmbH, Hans-Böckler-Straße 4, 59423 Unna, Germany (applicant), represented by Görg Partnerschaft von Rechtsanwälten mbB, Upper West Kantstrasse 164, 10623 Berlin, Germany (professional representative).
On 29/06/2017, the Opposition Division takes the following
1. Opposition No B 2 747 239 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the services of European Union trade mark application No 13 309 811. The opposition is based on European Union trade mark registration No 12 245 023. The opponent invoked Article 8(1)(a) and (b) EUTMR.
Svane Smart Kitchen
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 good and services
The goods and services on which the opposition is based are the following:
Class 20: Furniture, parts and hereto (not included in other classes), namely kitchen cabinets, drawers and doors, wire baskets in plastic and metal, drawer inserts of wood, plastic and metal; bath equipment (not included in other classes) of wood, plastic and metal, wardrobes, sliding doors of wood, plastic and metal.
Class 35: Wholesale and retail of kitchens, bath equipment, wardrobes and sliding doors.
Class 37: Installation of kitchen equipment, bath equipment, wardrobes, sliding doors in the form of mounting kitchens, bath equipment, wardrobes, sliding doors.
Class 39: Transport services, in the form of delivery of kitchens, bath equipment, wardrobes and sliding doors.
Class 42: Design and development of and advise regarding interior design of kitchen, bath, wardrobe and sliding doors solutions.
The contested services are the following:
Class 35: Advertising, in particular marketing and advertising through advertising magazines; Business administration; Office functions; Business management.
Class 45: Legal services, in particular licensing services, licensing of software and computer programs.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these services.
The term ‘in particular’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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.
Contested 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. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.
Business management services are usually rendered by specialist companies 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 include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.
Business administration is all the activity associated with running a company, including planning, organizing, decision taking, managing employment and performance etc.
Office functions are all the activities associated with operations of the office e.g. filing and sorting documents, appointment scheduling, mail handling etc.
On the other hand, the opponent’s goods are kitchen furniture, bath equipment, wardrobes and sliding doors, and the opponent’s services concern the sale, installation, transport, design and development of these goods.
In light of the above, it is clear that these services have no relevant point of contact with any of the opponent’s goods and services and they are, therefore, dissimilar.
In particular, it should be noted that the contested advertising in particular marketing and advertising through advertising magazines is fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. Contrary to the opponent’s arguments, the fact that the opponent’s goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised.
Moreover, the fact that the opponent has protection for some services in Class 35, namely wholesale and retail of kitchens, bath equipment, wardrobes and sliding doors does not automatically mean that these services overlap with or are similar to the contested services in the same class. 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. In the present case, the nature, purpose, method of use, distribution channels, usual providers and relevant public of these services are different. They are neither complementary nor in competition. Therefore, as concluded above, they are dissimilar.
Contested services in Class 45
The contested services in this class are legal services provided by lawyers. It is obvious that they have no relevant point of contact with any of the opponent’s goods and services and they are, therefore, 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.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the services are obviously not identical.
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
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.