INMARKT | Decision 2767112
Date Published: Sep 22, 2017
EOPPOSITION No B 2 767 112
Möbel Inhofer GmbH & Co. KG, Ulmer Str. 50, 89250 Senden, Germany (opponent), represented by Charrier Rapp & Liebau, Fuggerstr. 20, 86150 Augsburg, Germany (professional representative)
a g a i n s t
Essence Investments B.V., Herastraat 51, 5047 TX Tilburg, The Netherlands (applicant), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, The Netherlands (professional representative).
On 13/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 767 112 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 services of European Union trade mark application No 15 604 143, namely against some of the services in Class 35. The opposition is based on German trade mark registration No 30 571 644. The opponent invoked Article 8(1)(b) EUTMR.
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 services
The services on which the opposition is based are the following:
Class 35: Wholesale and retail services of furniture and other items of interior decoration; collection of goods, namely furniture and other items of interior decoration for third parties, for presentation and sales purposes.
In the opposition notice, the opponent had indicated that the opposition is directed against some of the services, namely retailing and wholesaling of consumer goods, including interior furnishings (namely furniture, lamps, mirrors, picture frames); lighting, heating, household or kitchen utensils and containers, in Class 35. However, as the indicated services retailing and wholesaling of consumer goods do not appear, as such, in the contested application, but fall under business mediation in, inter alia, retailing and wholesaling of consumer goods, the Opposition Division considers that the contested services are the following:
Class 35: Business mediation in the retailing and wholesaling of consumer goods, including interior furnishings (namely furniture, lamps, mirrors, picture frames), lighting, heating, household or kitchen utensils and containers.
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 term ‘including’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
The contested business mediation in the retailing and wholesaling of consumer goods, including interior furnishings (namely furniture, lamps, mirrors, picture frames), lighting, heating, household or kitchen utensils and containers is a service offered by a neutral mediator or an intermediary to bring businesses together to negotiate agreements for purchase and sale of goods. In the present case, the particular services offered are those of an intermediary to parties trying to reach an agreement on the retailing and wholesaling of consumer goods. Nonetheless, it is clear from the applicant’s specification that the services at issue are, in their essence and nature, business mediation services, even if provided in relation to a particular branch of commerce.
These services include gathering information from the business parties and negotiating and/or attempting to resolve any dispute and come to a mutually acceptable agreement. These are highly specialised services offered by qualified business intermediaries or mediators. These are not services provided by retail and wholesale operators unlike the opponent’s wholesale and retail services of furniture and other items of interior decoration, collection of goods, namely furniture and other items of interior decoration for third parties, for presentation and sales purposes. Therefore, the services at issue do not have the same providers. Furthermore, the natures and purposes of these services are different, as the contested services aim at enabling business relationships or resolving disputes by gathering information, whereas the opponent’s services bring together a variety of goods enabling customers, including professionals, to conveniently view and purchase those goods in either small quantities as regards retail or bigger quantities, for resale, as regards wholesale. Moreover, the distribution channels and end users are different. The contested business mediation is offered by qualified mediators/intermediaries and intended for the manufacturers of the goods and their retailers/wholesalers, but not for the end users of the retail/wholesale services, whereas the opponent’s services target furniture shops, interior decoration outlets and the final consumers. Furthermore, by definition, services intended for different publics cannot be complementary (22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298; 12/07/2012, T-361/11, Dolphin, EU:T:2012:377). As established above, the services in question are intended for different publics, so they are not complementary. Finally, these services are not in competition with each other, since one cannot be substituted for the other and their purposes and potential customers are different. Considering all the above, the contested services are dissimilar to the services for which the earlier mark is registered.
- 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 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
Gueorgui IVANOV | Ieva SMILGAINE | Ewelina SLIWINSKA |
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.