VIVA | Decision 2753484
Date Published: Sep 25, 2017
OPPOSITION No B 2 757 279
Viva Technologies Limited, 3rd Floor, 207 Regent Street, London, W1B 3HH, United Kingdom (opponent)
a g a i n s t
Realjos S.L., Doctor Federico Rubio y Gali 19, 28039 Madrid, Spain (applicant), represented by Luis Rey Aguilar, Calle Francisco Silvela, 71 - Bajo C, 28028 Madrid, Spain (professional representative).
On 10/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 757 279 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 15 434 392. The opposition is based on Benelux trade mark registration No 995 276. The opponent invoked Article 8(1)(b) EUTMR.
VIVA.COM | VIVA |
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 37: | Building construction; installation, repair and maintenance of computers and computer peripherals; installation and repair of telecommunications networks; installation of communications network instruments. |
The contested services are the following:
Class 37: | Service stations (petrol stations). |
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.
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.
A service station (petrol station) is a facility that sells fuel and engine lubricants for motor vehicles. The most common fuels sold are gasoline and diesel fuel.
Building services in Class 37 cover all the services involved in the physical construction of a building.
Installation, repair and maintenance of computers and computer peripherals; installation and repair of telecommunications networks; installation of communications network instruments in Class 37 are technical installation and support services in the area of information and communications technologies. These services are generally provided by IT companies or professionals.
Therefore, the contested service station (petrol station) is dissimilar to all the opponent’s services in Class 37. The natures, methods of use and intended purposes of the services under comparison are clearly different; they will certainly be provided by different companies or professionals via distinct outlets or distribution channels. Moreover they target different public and are neither complementary nor in competition with each other.
The simple fact that a petrol station (or any other enterprise or business requiring a facility) involves the use of building services to construct, assemble an edifice or construction, does not render them similar. Therefore, the opponent’s argument must be set aside as groundless.
- 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
Rasa BARAKAUSKIENE | Fabián GARCIA QUINTO | Zuzanna STOJKOWICZ |
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.