OPPOSITION No B 2 272 261
Enzycorp s.r.o., V Zeleném údolí 1330/14, 14800 Praha 4, Czech Republic (opponent), represented by Rott, Růzička & Guttmann Patentová, známková a advokátní kancelář, Vinohradská 37/938, 120 00 Praha 2, Czech Republic (professional representative)
a g a i n s t
Enzymix s.r.o., Frindova 612/24, 407 46 Krásná Lípa, Czech Republic (applicant), represented by Traplová Hakr Kubát Advokátní a patentová kancelář, Přístavní 24, 170 00 Praha 7, Czech Republic (professional representative).
On 26/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 272 261 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 11 873 809, namely against all the goods and services in Classes 1 and 35. The opposition is based on Czech trade mark application No 503 912 and European Union trade mark application No 12 256 707. The opponent invoked Article 8(1)(b) EUTMR.
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VERMAKTIV |
VERMAKTIV Stimul |
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Earlier trade marks (word marks) |
Contested sign (word mark) |
CEASING OF EXISTENCE OF EARLIER CZECH TRADE MARK APPLICATION No 503 912
According to Article 41(1)(a) EUTMR, within a period of three months following the publication of a European Union trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:
- by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5);
[…].
Further, according to Article 8(2) EUTMR, ‘earlier trade marks’ means:
(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking into account, where appropriate, of the priorities claimed in respect of those marks;
(ii) applications for a trade mark referred to in Article 8(2)(a) EUTMR, subject to their registration;
(iii) trade marks which are well known in a Member State.
Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.
Furthermore, if, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid, it has not matured to registration or it has not been renewed), the final decision cannot be based on it. The opposition may be upheld only with respect to an earlier right that is valid at the moment when the decision is taken. The reason why the earlier right ceases to have effect does not matter. Since the EUTM application and the earlier right that has ceased to have effect cannot coexist any more, the opposition cannot be upheld. Such a decision would be unlawful (13/09/2006, T-191/04, Metro, EU:T:2006:254, § 33-36).
In the present case, the opponent filed a notice of opposition on 11/11/2013, claiming as one of the bases of the opposition Czech trade mark application No 503 912.
Czech trade mark application No 503 912 was refused in its entirety by the decision of the Industrial Property Office of the Czech Republic of 10/06/2015, which became final. This decision was sent to the opponent. However, they failed to submit observations in reply.
As is apparent from the above, the earlier mark has ceased to exist and thus cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 41(1)(a) EUTMR and Article 8(2) EUTMR.
Therefore, the present opposition does not have a legal basis and, accordingly, does not comply with the requirements of the abovementioned legal provisions, inasmuch as the opponent relies on Czech trade mark application No 503 912.
The opposition must therefore be rejected as unfounded, insofar as it is based on this earlier right.
The Opposition Division will proceed with the examination of the opposition based on EUTM No 12 256 707.
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 goods and services
The opposition was based on all the goods and services of the opponent’s European Union trade mark application No 12 256 707, namely those in Classes 1 and 35.
On 16/08/2016, the opponent’s European Union trade mark application No 12 256 707 was rejected in case No B 2 338 260, on relative grounds, for all the goods in Class 1. The decision is now final and therefore the services on which the opposition is based are the following:
Class 35: Consultancy relating to business organisation; Business management assistance; Business advisory services relating to company performance; Commercial management.
The contested goods and services are the following:
Class 1: Chemicals for improving the health of plants and aiding the recovery thereof, chemicals for the revitalisation of soil and for promoting soil bacteria and enzymatic reactions, preparations for improving the efficacy of manures.
Class 35: Retailing and wholesaling of chemicals for improving the health of plants and aiding the recovery thereof, chemicals for the revitalisation of soil and for promoting soil bacteria and enzymatic reactions, preparations for improving the efficacy of manures and preparations for repelling and destroying vermin.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.
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 ‘Canon’ criteria).
Contested goods in Class 1
By their nature, goods are generally dissimilar to services and this is because a service is always an intangible asset. When it comes to the comparison of the goods in Class 1 and the link with the opponent’s services in Class 35, similarity can be found when it is common in the relevant market sector for the manufacturer of the goods to also provide such services. However, the contested goods in Class 1 chemicals for improving the health of plants and aiding the recovery thereof, chemicals for the revitalisation of soil and for promoting soil bacteria and enzymatic reactions, preparations for improving the efficacy of manures have no link with the opponent’s services in Class 35. These services are mainly performed to organise and run a business. The contested goods are far removed from the opponent’s services in Class 35 in terms of the Canon criteria defined above, namely nature, purpose, distribution channels and usual origin. Furthermore, they are neither in competition nor complementary. Therefore, they are dissimilar.
Contested services in Class 35
The opponent’s consultancy relating to business organisation; business management assistance; business advisory services relating to company performance; commercial management fall under the category of business services. They do not relate to the actual retail and wholesale of goods but are preparatory or ancillary to the commercialisation of goods. When comparing the opponent’s services with the contested services retailing and wholesaling of chemicals for improving the health of plants and aiding the recovery thereof, chemicals for the revitalisation of soil and for promoting soil bacteria and enzymatic reactions, preparations for improving the efficacy of manures and preparations for repelling and destroying vermin, the Opposition Division finds them dissimilar. The contested services in Class 35 consist in bringing together and offering for sale chemical products to consumers in industrial and other professional businesses. They differ in their nature and purpose, as the contested services relate to the process of selling goods through different channels and the opponent’s services focus on providing tools, expertise and information to carry out a business. They are neither in competition nor complementary and they are not usually offered by the same undertaking.
- 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
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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.