HALCYON | Decision 2703414
Date Published: Sep 25, 2017
OPPOSITION No B 2 703 414
Alción Plásticos, S.L., Carretera de Aldaya-Chirivella 53, 46960 Aldaya, Valencia, Spain (opponent), represented by Oficina de Propiedad Industrial Gil Vega, C/ Corazón de María, 6, 4ª Plta., 28002 Madrid, Spain (professional representative)
a g a i n s t
Berry Plastics Corporation, 101 Oakley Street, Evansville, Indiana 47706-0959, United States of America (applicant), represented by Schneiders & Behrendt, Mühlthaler Str. 91C, 81475 Munich, Germany (professional representative).
On 25/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 703 414 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 of European Union trade mark application No 15 076 631, namely against all the goods in Class 17. The opposition is based on European Union trade mark registration No 1 1804 011. The opponent invoked Article 8(1)(b) EUTMR.
HALCYON | |
Earlier trade marks | 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 services on which the opposition is based are the following:
Class 40: Treatment of materials; processing of plastics.
The contested goods are the following:
Class 17: Plastic stretch film (used) for industrial or commercial packing; plastic stretch film.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 contested plastic stretch film (used) for industrial or commercial packing; plastic stretch film in Class 17 are thin continuous polymeric material used to cushion packed goods. These goods are dissimilar to the opponent’s treatment of materials; processing of plastics services in Class 40, which consist of specialised services that involve the mechanical or chemical processing or transformation of objects or substances.
By their nature, goods are generally dissimilar to services. This is because goods are articles of trade, wares or merchandise. Their sale usually entails the transfer in title of something physical. Services, on the other hand, consist of the provision of intangible activities. Furthermore, the method of use of those goods and services is different. Goods and services may display similarities in exceptional cases, for instance, when they are complementary and the relevant services are generally offered in the same places as those where the goods are offered for sale and in view of the fact that they target the same public (e.g. retail services of specific goods versus the same specific goods). Nonetheless, this is not the case in the present comparison, where the relevant goods and services do not have the same purpose and are not likely to be manufactured/provided by the same undertakings, be marketed through the same distribution channels or target the same consumers. They are neither in competition with, nor necessarily complementary to, each other.
- 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
Andrea VALISA | Orsola LAMBERTI | María Clara IBÁÑEZ FIORILLO |
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.