SH solutions | Decision 2675737 - ShinHan Art Materials Inc. v. CONEX - TRADE, spol. s r.o. Košice
Date Published: Oct 1, 2017
OPPOSITION No B 2 675 737
ShinHan Art Materials Inc., 452 Sanjiseok-ri, Gyoha-eup, Paju-si, Gyeonggi-do, Republic of Korea (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)
a g a i n s t
Conex – Trade, spol. s r.o. Košice, Čermeľská cesta 1, 04001 Košice, Slovakia (applicant), represented by Ivan Belička, Švermova 21, 974 04 Banská Bystrica, Slovakia (professional representative).
On 24/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 675 737 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 14 271 902, namely against all the goods in Class 16. The opposition is based on European Union trade mark registration No 11 819 158. The opponent invoked Article 8(1)(b) EUTMR.
SH | |
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
The goods on which the opposition is based are the following:
Class 2: Colors for drawing pictures, water-colors, oil colors.
The contested goods are the following:
Class 16: Pamphlets; Catalogues; Flyers; Loyalty cards and store cards (not for games, not magnetic, not encoded); Bags [envelopes, pouches] of paper or plastics, for packaging; Posters; Writing tablets; Postcards; Handbooks [manuals]; Advertisement boards of paper or cardboard; Stickers [stationery]; Instructional and teaching material (except apparatus); Indexes; Forms, printed.
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 Writing tablets can be used in combination with the opponent’s Colors for drawing pictures, water-colors, oil colors for drawing pictures. However, it is not sufficient for finding similarity that these goods can be used together. They normally differ in manufacturer and distribution channels. Moreover, they differ in nature, method of use and intended purposes, namely to be used for writing on versus to be used for drawing pictures with. They are not in competition with each other or not necessarily complementary to each other. Therefore, they are dissimilar.
The remaining contested Pamphlets; Catalogues; Flyers; Loyalty cards and store cards (not for games, not magnetic, not encoded); Bags [envelopes, pouches] of paper or plastics, for packaging; Postcards; Handbooks [manuals]; Advertisement boards of paper or cardboard; Stickers [stationery]; Instructional and teaching material (except apparatus); Indexes; Forms, printed and all the opponent’s goods differ in nature, purpose, distribution channels, producers, method of use and are not in competition with each other or complementary to each other. Therefore, they are dissimilar.
- 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, 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
Irina SOTIROVA | André Gerd Günther BOSSE | Plamen IVANOV |
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.