AYR | Decision 2663543 - Bax-shop.nl B.V. v. Beyond Twenty Ltd
Date Published: Oct 1, 2017
OPPOSITION No B 2 663 543
Bax-Shop.nl B.V., Olympiastraat 2, 4462 GG Goes, Netherlands (opponent), represented by de Merkplaats B.V.,Herengracht 227, 1016 BG Amsterdam, Netherlands (professional representative)
a g a i n s t
Beyond Twenty Ltd, Cargoworks 1-2 Hatfields, London SE1 9PG, United Kingdom (applicant), represented by Origin Limited Twisden Works, Twisden Road London NW5 1DN, United Kingdom (professional representative).
On 11/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 663 543 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 14 876 528 namely against all the goods in Classes 9 and 11 and some of the services in Class 42. On 04/10/2016, the applicant filed a limitation after which the contested goods and services are all the goods in Class 9 and some of the services in Class 42. The opposition is based on European Union trade mark registration No 10 991 511 and Benelux trade mark registration No 1 233 259. The opponent invoked Article 8(1) (b) EUTMR.
AYRA | AYR |
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.
- The goods and services
The goods on which the opposition is based are the following:
From the European Union trade mark registration No 14 876 528:
Class 9: Software for checking and regulating lamps by means of computer.
Class 11: Apparatus for heating.
From the Benelux trade mark registration No 1 233 259
Class 9: Apparatus and instruments for the conduction, distribution, change storage, control and master of electricity.
Class 11: Heating installations.
The contested goods and services are the following:
Class 9: Computer software (downloadable) for controlling and monitoring electronic cigarettes and personal vaporisers; computer software (downloadable) for enabling cartridges of e-liquid used in e-cigarettes to be ordered from an electronic-fulfillment service.
Class 42: Computer software (non-downloadable) for controlling and monitoring electronic cigarettes and personal vaporisers; computer software (non-downloadable) for enabling cartridges of e-liquid used in e-cigarettes to be ordered from an electronic-fulfillment service.
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 goods and services in Class 9 and 42
The contested computer software (downloadable) for controlling and monitoring electronic cigarettes and personal vaporisers; computer software (downloadable) for enabling cartridges of e-liquid used in e-cigarettes to be ordered from an electronic-fulfilment service includedin Classes 9(downloadable) and 42 (non-downloadable) are technological systems that allow consumers to receive data from a remote server. Due to the specific area of the contested goods and services, it is likely to think that they are led by specific companies which specialize in vaporizer research, production, development and sales.
On the other hand, the opponent’s software for checking and regulating lamps by means of computer includes intelligent network on lighting control solutions that incorporate communication between various system inputs and outputs related to lighting control with the use of one or more central computing devices.
There is no doubt that the conflicting goods and services share an identical complex nature as software, however, in the present case the identical nature is not sufficient to support a finding of similarity between them. In fact, it has to be noted that there are many types of software, and although software by nature (a set of instructions that enables a computer to perform a task) is the same, this does not mean that their specific purpose will coincide. In the case at hand, the opponent’s goods serve to control and provide the right amount of light or electrical energy where and when it is needed and will be widely used, for example, in both indoor and outdoor lighting of commercial, industrial and residence spaces. The contested goods and services are downloadable systems that enable consumers to make several operations related to electronic cigarettes, namely to order goods as cartridges or e-liquid. Both lists satisfy manifestly different consumer needs and, consequently, do not target the same public. The conflicting goods and services require different expertise and ‘know how’ and therefore they do not usually share the same origin. They have different purpose and method of use and are neither complementary nor in competition. They are therefore dissimilar.
The same conclusion can be reached with respect to the opponent´s apparatus and instruments for the conduction, distribution, change storage, control and master of electricity in Class 9 of the Benelux trade mark registration No 1 233 259. The contested computer software (downloadable) for controlling and monitoring electronic cigarettes and personal vaporisers; computer software (downloadable) for enabling cartridges of e-liquid used in e-cigarettes to be ordered from an electronic-fulfillment service are software whereas the opponent´s goods are different kind of devices or apparatus for regulating electricity. The sole fact that electronic cigarettes or their components may use electricity as its main energy is not sufficient for a finding of similarity between these goods and services. In fact, they have different natures, purposes and methods of use. Their producers, distribution channels and relevant publics are also different and they are neither in competition nor complementary. Therefore, they are dissimilar.
The opponent argues that the abovementioned goods are either identical or similar in a high degree either because one set of goods covers the other or merely states that there is a degree of similarity. The opponent did not submit any evidence or relevant arguments to explain why the goods and services are identical or similar.
- 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
Ric WASLEY | Alexandra APOSTOLAKIS | Richard BIANCHI |
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.