OPPOSITION No B 2 339 888

Dachs Electronica, S.A., Avd. del Progres, 97.- Pol. Indl. Els Garrofors, 08340 Vilassar De Mar, Spain (opponent), represented by Gt. De Propiedad Industrial, S.L., c/Capitán Haya, núm. 38-7º-izda., 28020 Madrid, Spain (professional representative)

a g a i n s t

Foxconn Interconnect Technology Limited, Floor 4, Willow House, Cricket Square, PO Box 2804, Grand Cayman 1-1112, The Cayman Islands (applicant), represented by Olswang LLP, 90 High Holborn, London WC1V 6XX, United Kingdom (professional representative).

On 08/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 339 888 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 420 428. The opposition is based on European Union trade mark registration No 11 526 357. The opponent invoked Article 8(1)(b) EUTMR.

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.

Preliminary observations

The opposition was originally directed against all the goods and services of European Union Trade Mark application No 12 420 428 in Classes 9 and 35. After the decision in opposition No B 2 346 156 dated 22/01/2015, the Opposition Division rejected the application for the goods in Class 9. No appeal was filed; therefore, the abovementioned decision is final. The Opposition Division will now examine the opposition in the present case against the remaining services in Class 35.

1. The goods and services

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

Class 9: Anode batteries.

Class 35: Retailing and/or wholesaling, including via global computer networks, of batteries.

The contested services are the following:

Class 35: Import-export agencies; sales promotion (for others); procurement services for others (purchasing goods and services for other business).

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 import-export agency services relate to the movement of goods and normally require involvement of customs authorities in both the importing and exporting countries. These services are often subject to import quotas, tariffs and trade agreements and are considered to relate to business administration.

When comparing the abovementioned contested services with the opponent’s services in Class 35 and goods in Class 9, the Opposition Division finds them dissimilar. The opponent’s services in Class 35 are retail and wholesale services of very specific products that consist of bringing together, and offering for sale, products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. These goods and services have different natures and purposes. They do not have the same distribution channels and they are not in competition with or complementary to each other. Furthermore, these services are normally provided by different kinds of undertakings.

The contested sales promotion (for others) is an advertising service. Advertising services consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the 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. Therefore, this contested service is also dissimilar to the opponent’s goods and services. This is because the opponent’s goods and services in Classes 9 and 35 have different natures, purposes and distribution channels, and they are not in competition with or complementary to the contested advertising service. Furthermore, they will be provided by different undertakings.

Finally, the contested procurement services for others (purchasing goods and services for other business) are also dissimilar to the opponent’s retailing and/or wholesaling, including via global computer networks, of batteries and goods in Class 9. The objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists of, inter alia, selecting an assortment of goods offered for sale and offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor. Therefore, these services have different natures, purposes and distribution channels, they will be provided by different undertakings and they are not in competition or complementary.

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 goods and 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

Martin EBERL

Anna POLITI

Vít MAHELKA

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.