BIO CERAMICA F.I.R. | Decision 2737545
Date Published: Sep 28, 2017
OPPOSITION No B 2 737 545
Bioceramic 2012, S.L., Pol. Ind. Asegra - Avda. Asegra, 16, 18210 Peligros, Granada, Spain (opponent), represented by Consiangar, S.L., Calle Albasanz, 72-1º 1, 28037 Madrid, Spain (professional representative)
a g a i n s t
Home Relax S.R.L., Via Croce Rossa 5/R, 51037 Montale (Pistoia), Italy (applicant).
On 24/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 737 545 is rejected in its entirety.
2. The opponent bears the costs.
REASONS:
The opponent filed an opposition against all the goods in classes 10, 20, 24 of European Union trade mark application No 15 407 828. The opposition is based on European Union trade mark registration No 11 248 408 . The opponent invoked Article 8(1)(a) and (b) EUTMR.
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 and services on which the opposition is based are the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Fire-extinguishing apparatus.
Class 25: Ready-made clothing, footwear and headgear.
Class 35: Information and consultancy relating to retailing in shops and via global computer networks of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (inspection), life-saving and teaching apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, ready-to-wear clothing, footwear and headgear; Import and export of all kinds of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (inspection), life-saving and teaching apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, ready-to-wear clothing, footwear and headgear; Demonstration of goods; Organisation of trade shows or advertising shows.
The contested goods are the following:
Class 10: Medical furniture and bedding, equipment for moving patients.
Class 20: Furniture and furnishings.
Class 24: Textile goods, and substitutes for textile goods.
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 in Class 10
The contested goods in this class are specific medical furniture, equipment and bedding. These goods do not coincide in nature, purpose or methods of use with any of the goods of the opponent (listed above). The goods have different origins, distribution channels and users. The goods are not complementary nor in competition. The goods are dissimilar. The same is also concluded when comparing the contested goods with the opponent’s services. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.
Contested goods in Class 20
The contested goods in this class are furniture and furnishings. These goods do not coincide in nature, purpose or methods of use with any of the goods of the opponent. The goods have different origins, distribution channels and users. The goods are not complementary nor in competition. The goods are dissimilar. The same is also concluded when comparing the contested goods with the opponent’s services. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.
Contested goods in Class 24
The main point of contact between the contested Textile goods, and substitutes for textile goods and the opponent’s clothing in Class 25 is that they are made of textile material or substitutes. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing is meant to be worn by people, or serves as a fashion article, whereas textile goods are mainly for household purposes and interior decoration. Therefore, their method of use is different. Moreover, the distribution channels and sales outlets of the contested goods and clothing are different and the relevant public will not think that they originate from the same undertaking. Therefore, Textile goods, and substitutes for textile goods are considered to be dissimilar to the opponent’s clothing (see decisions of 31/05/2012, R 1699/2011-4, GO REBEL (fig.) / GO GLORIA ORTIZ (fig.), § 16; 26/07/2012, R 1367/2011-1, PROMO TEXTILE (fig.) / Promodoro, § 17; 01/08/2012, R 2353/2010-2, Refrigue for cold (fig.) / RefrigiWear (fig.) et al., § 26). The goods are also dissimilar to all other goods and services of the opponent as the goods do not coincide in nature, purpose or methods of use with any of the goods of the opponent. The goods have different origins, distribution channels and users. The goods are not complementary nor in competition. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.
- 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 are clearly dissimilar to all the opponent’s goods and services, 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 goods are obviously not identical.
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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Francesca DINU | Erkki MÜNTER | Irina SOTIROVA |
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.