CITYLIFT | Decision 2533688 - CITYLIFT, S.A. v. FRANK MARTENS INVEST
Date Published: Sep 28, 2017
OPPOSITION No B 2 533 688
Citylift, S.A., Poligono Industrial Mas Xirgu Ctra. Sta. Coloma 99, 17005 Girona, Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)
a g a i n s t
Frank Martens Invest, Verviersstraat 1 - bus 5.1, 2000 Antwerpen, Belgium (applicant), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 533 688 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 13 970 231. The opposition is based on European Union trade mark registration No 10 782 084. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.
Earlier trade mark | Contested sign |
- The goods and services
The goods and services on which the opposition is based are the following:
Class 7: Lifts, elevators and hoists.
Class 37: Construction, repair and installation of lifts, elevators and hoists.
The contested goods and services, after a partial refusal of the contested sign, are the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; fire-extinguishing apparatus; mechanisms for coin-operated apparatus; cash registers.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services.
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.
Contested goods in Class 9
The contested scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments are various types of apparatus and instruments, mostly with highly specialised technical character and specific uses in different fields of science, cinematography and photography, navigation, life saving, etc. These goods have in essence different natures and methods of use from the opponent’s lifts, elevators and hoists in Class 7, which are devices used to lift up objects or carry people up and down inside buildings. These goods will also differ in their relevant publics and distribution channels from the opponent’s goods, which will be directed to a very specialised niche of a professional public, for instance building owners, building engineers and other experts in building construction with some knowledge about the relevant goods. The contested goods will also differ from the opponent’s construction, repair and installation of these relevant goods covered in Class 37 of the opponent’s mark. In general, it is unlikely that the contested goods will originate from the same undertakings as the opponent’s goods and services, to be in competition with them or to be complementary to them since they do not overlap in any relevant commercial point. Therefore, they are considered dissimilar.
The contested apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity include devices such as accumulators, batteries, cables, circuits, conductors, switches, transistors, wires, etc. Although such electric apparatus and instruments may be used to some extent as parts and components in the opponent’s goods or their installation and maintenance, this is not a sufficient reason to find any similarity between them. These goods have a different nature, purpose and method of use from all the opponent’s goods and services being focused in a particular technical area (lifts and elevators, as well as auxiliary services). Again, the goods and services in question have different consumers and distribution channels. Furthermore, they are neither in competition with each other nor complementary. Therefore, the goods are dissimilar.
The contested fire-extinguishing apparatus; mechanisms for coin-operated apparatus; cash registers are dissimilar to the opponent’s goods and services. The natures and purposes of these goods and services are different and they target different end consumers, as referred to above in relation to the opponent’s goods and services. Finally, the goods and services are neither in competition with each other nor complementary to each other.
Contested services in Class 42
The contested scientific and technological services and research and design relating thereto; industrial analysis and research services have different natures, methods of use and intended purposes from the opponent’s services in Class 37 consisting of installation, repair and maintenance of lifts systems. Furthermore, the contested services are in essence different from the opponent’s goods in Class 7 concerning the respective goods in relation to which the services of the opponent are provided. The relevant services in Class 42 are activities involving research, analysis and experiment in terms of development and contributing to science and technical progress; consequently, these services have very specific distribution channels and relevant public, the opponent’s goods and services are meant for a different professional public, as referred to above, and are distributed or provided through different channels. It is rather unlikely that the goods and services will have the same origins, and they are not complementary to each other or in competition. The contested services are dissimilar to all the opponent’s goods and services.
- 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.
This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.
REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.
On 25/08/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 30/12/2015.
The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.
The opponent first submitted some evidence of reputation on 02/08/2016, that is, long after the expiry of the abovementioned time limit.
According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.
Given that the abovementioned evidence cannot be taken into account, the opponent failed to establish that the trade mark on which the opposition is based has a reputation.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded, insofar as this ground is concerned.
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
Volker MENSING | Patricia LOPEZ FERNANDEZ DE CORRES | Robert MULAC |
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.