SuperCor | Decision 2625153
Date Published: Sep 28, 2017
OPPOSITION No B 2 625 153
El Corte Inglés, S.A., C/ Hermosilla 112, 28009 Madrid, España (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, España (professional representative)
a g a i n s t
AIL International Inc., 13 Silvershore Drive, Sackville, New Brunswick E4L 1M7, Canada (applicant), represented by Kilburn & Strode LLP, 20 Red Lion Street, London WC1R 4PJ, United Kingdom (professional representative).
On 15/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 625 153 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 14 370 209 ‘SuperCor’. The opposition is based on:
- Spanish trade mark registration No 2 090 579 ‘SUPERCOR’.
- Spanish trade mark registration No 2 096 219
- Spanish trade mark registration No 2 306 556 ‘SUPERCOR EXPRESS’.
- Spanish trade mark registration No 3 041 855 ‘SUPERCOR’.
The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based. The Office, however, only requested proof of use of Spanish trade mark registrations No 2 090 579, No 2 096 219 and No 2 306 556, as Spanish trade mark registration No 3 041 855 had not been registered for five years at the time of the publication of the contested trade mark.
On 21/09/2016, the opponent was given two months to file the requested proof of use. This deadline was extended in accordance with Rule 71 EUTMIR until 26/01/2017.
The opponent did not submit any evidence concerning the use of earlier Spanish trade mark registrations No 2 090 579, No 2 096 219 and No 2 306 556, on which the opposition is based. It did not argue that there were proper reasons for non-use either.
According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.
Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR in relation to Spanish trade mark registrations No 2 090 579, No 2 096 219 and No 2 306 556.
The Opposition Division will continue the evaluation of this opposition on the basis of Spanish trade mark registration No 3 041 855.
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 goods and services on which the opposition is based are the following:
Class 43: Services for providing food and drink; temporary accommodation.
Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Class 45: Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.
The contested goods are the following:
Class 6: Building and construction materials and elements of metal; Framework of metal for building; Arches of metal; Building components of metal for the construction of arches; Structures of metal; Modular building units (Metal -); Modular metallic structures; Unprocessed and semi-processed materials of metal, not specified for use; Cold rolled sheet metal; Zinc-coated steel sheets; Sheets and plates of metal; Galvanized steel plate; Galvanized steel sheets; Steel fabrications; Building structures of metal; Structures of metal; Structures of steel for building.
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.
Goods and services are always different in nature, since services are intangible whereas goods are tangible. In this case, the opponent’s services and the contested goods have nothing in common under the rest of the criteria used to assess similarity. They have different purposes, as the contested goods are used as building materials whereas the services in Class 43 are services provided by restaurants, bars, hotels, etc., the services in Class 44 pertain to the health and beauty of human beings and animals, and to the fields of agriculture, horticulture and forestry, and the services in Class 45 are personal and social services rendered by others to meet the needs of individuals.
Furthermore, the goods and services are not complementary in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). They are not in competition either, and they are distributed through very different channels of trade.
Consequently, the contested goods and the services for which the earlier mark is registered 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 and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must also be rejected insofar as it is based on Spanish trade mark registration No 3 041 855.
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
Angela DI BLASIO | María Belén IBARRA DE DIEGO | Ana MUÑIZ RODRÍGUEZ |
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.