STAR | Decision 2774035
Date Published: Sep 24, 2017
OPPOSITION No B 2 774 035
Finanzauto SA., Avenida de Madrid, 43, 28500 Arganda del Rey, Spain (opponent), represented by Alesci Naranjo Propiedad Industrial SL, Calle Paseo de la Habana 200, 28036 Madrid, Spain (professional representative)
a g a i n s t
Penta CZ s.r.o., Povážská 266, 386 01 Strakonice - Přední Ptákovice, Czech Republic (applicant), represented by Jiří Macek, Sázavská 16, 120 00 Praha 2-Vinohrady, Czech Republic (professional representative).
On 21/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 774 035 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 15 129 752 , namely those in Classes 9 and 35. The opposition is based on Spanish trade mark registration No 3 064 142
. The opponent invoked Article 8(1)(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 services on which the opposition is based are the following:
Class 42: Technical and technological advising related to machines and motors.
The contested goods and services are the following:
Class 9: Monitors; process monitors; colour monitors; LCD monitors; LED monitors; monitors; computer screens; video monitors; wide-aspect ratio monitors; monitors [computer programs]; digital signage monitors; monitors [computer hardware]; cash registers; electronic cash registers; automatic cash registers; bar code readers; computer keyboards; multifunction computer keyboards; computers; printers; ink jet printers; optical printers; plotter printers; colour printers; matrix printers; laser beam printers; thermal printers; digitizing printers.
Class 35: Business promotion; sales promotion; advertising; advertising; promotion [advertising] of business; promotion [advertising] of business; advertising and marketing consultancy; press advertising consultancy; marketing assistance; marketing consulting; marketing advice; business advice relating to marketing; professional consultancy relating to marketing; advisory services relating to promotional activities; advisory services relating to publicity for franchisees; advisory services relating to sales promotion; product marketing; direct marketing; marketing advice; provision of information relating to marketing; marketing services; market research; advertising and marketing; direct marketing; dissemination of advertising material [leaflets, brochure and printed matter]; banner advertising; preparation of advertisements; bill-posting; online advertisements; radio advertising; advertising.
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 goods in Class 9 are all computers (including cash registers), computer programs and computer peripherals (including different types of monitors and printers).
These goods are all dissimilar to the opponent’s earlier services in Class 42 : besides being different in nature, it is certainly not common in the market for the manufacturer of these contested goods to also provide the opponent’s earlier services. These goods and services are not complementary, nor in competition with each other; they serve different purposes and do not coincide in distribution channels.
Contested services in Class 35
The opponent’s earlier services technical and technological advising related to machines and motors are rendered by specialist companies and technical experts in the field of motors and machinery. These advisory services include ‘consultancy’,
‘advisory’ and ‘assistance’ activity that are useful in the field of motors and machinery and refer to providing technical expert advice that is tailored to the circumstances or needs of users of motors and/or machinery.
The contested services are different types of advertising and marketing services, including advisory and consultancy services related to advertising and marketing. These services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.
Such services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Consequently, such services are dissimilar to the goods or services being advertised.
It follows from the foregoing that the services under comparison in the present proceedings clearly differ in purpose and providers and this despite the fact that they both include advisory services; indeed, their subject matter is different and, in addition to serving different purposes and being offered by different providers, the services are not in competition with each other nor complementary. Consequently, all the contested services are considered dissimilar to the opponent’s earlier specific services of technical and technological advising related to machines and motors.in Class 42.
In its observations, the opponent has argued that the goods and services under comparison are identical and similar. In support of its argument, the opponent has copied in extracts from three previous decisions the Office (namely in proceedings Nos B 2 587 312, B 2 544 651 and B 2 251 349) to support its arguments; however, none of them relates to the goods and services in question in the present proceedings. The cited cases concern different goods and services in the respective Classes 9, 35 and 42 and are not comparable to those at issue in the present proceedings. Therefore, the cited cases are not relevant in the present proceedings and the opponent’s arguments in this regard must be set aside.
- 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
Oana-Alina STURZA | Edith Elisabeth VAN DEN EEDE | Michele M. BENEDETTI-ALOISI |
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.