OPPOSITION DIVISION
OPPOSITION No B 2 687 351
Galco, 1 Esplanade de France, 42000 Saint-Etienne, France (opponent),
represented by Hirsch & Associés, 137 rue de l'Université, 75007 Paris, France
(professional representative)
a g a i n s t
Christian Doberschütz, Dunckerstr. 7, 10437 Berlin, Germany (applicant).
On 13/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 687 351 is rejected in its entirety.
2. The opponent bears the costs.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the services of European Union
trade mark application No 14 958 706 for the word mark depicted below, namely
against some of the services in Class 35. The opposition is based on French trade
mark registration No 01 3135749 of the figurative trade mark depicted below. The
opponent invoked Article 8(1)(b) EUTMR.
TRIP SMILE
Earlier trade mark Contested sign
Decision on Opposition No B 2 687 351 page: 2 of 3
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.
a) The services
The services on which the opposition is based are the following:
Class 35: Sales promotion services for others by means of customer loyalty
schemes; customer loyalty services connected or not with the use of a
card.
Class 36: Services of loyalty cards according financial advantages by granting
points prorata to purchases made.
After partial refusal of the contested application on 14/03/2017 in parallel opposition
proceedings No B 2 686 940, the contested services are the following:
Class 35: Commercial information and advice for consumers (consumer advice
shop).
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 commercial information and advice for consumers (consumer advice
shop) are services that aim to help consumers make better choices in the
marketplace and get help with consumer complaints by giving information on quality,
purchase locations, and other factors like the rights of consumers and/or fair trade,
upon which, a consumer would make a purchasing decision. They can also cover
topics like product liability, privacy rights, unfair business practices, fraud,
misrepresentation, and other consumer-business interactions.
In contrast, the opponent’s services in class 35 and 36 are customer loyalty services
and/or financial services in connection with loyalty schemes. Loyalty programmes are
structured marketing strategies designed by merchants to encourage customers to
continue to shop at or use the services of businesses associated with such a
program by usually offering a loyalty or reward card that identifies the card holder as
a member in those programs. By presenting such a card, purchasers typically earn
the right either to a discount on the current purchase, or to an allotment of points that
they can use for future purchases.
Therefore, and contrary to the opponent’s opinion, the services serve clearly different
purposes. Furthermore, they are targeted to a different public. The contested
services are directed at consumers in general, whereas the opponent’s services are
provided to business clients (companies etc.) within the frame of their marketing and
sales promotion. In other words, they provide assistance to business clients in the
Decision on Opposition No B 2 687 351 page: 3 of 3
sale of their goods and services. Finally, the services are neither in competition nor
complementary. Consequently, the services are dissimilar.
b) 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 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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. In the present case, the applicant did not appoint a
professional representative within the meaning of Article 120 EUTMR and therefore
did not incur representation costs.
The Opposition Division
Renata COTTRELL Konstantinos MITROU Sigrid DICKMANNS
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.