WEST PARK | Decision 2472614 - Westpark Einkaufszentrum Verwaltungs-GmbH v. TURNER BIANCA PLC
Date Published: Oct 1, 2017
OPPOSITION No B 2 472 614
Westpark Einkaufszentrum Verwaltungs-GmbH, Ingolstädter Str. 120, 85080 Gaimersheim, Germany (opponent), represented by Edeka Verband e.V., Hubertus Nölting, New-York-Ring 6, 22297 Hamburg, Germany (professional representative)
a g a i n s t
Turner Bianca Plc, Bell Mill, Claremont Street, Hathershaw, Oldham OL8 3EJ, United Kingdom (applicant), represented by Novagraaf UK, Suite 8b Lowry House, 17 Marble Street, Manchester M2 3AW, United Kingdom (professional representative).
On 28/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 472 614 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 13 551 593. The opposition is based on German trade mark registration No 39 873 490. The opponent invoked Article 8(1)(b).
WEST PARK | |
Earlier trade mark | Contested sign |
PROOF OF USE
Proof of use of the earlier mark was requested by the applicant. However, at this point the Opposition Division considers it appropriate to not undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the services invoked, which is the best light in which the opponent’s case can be considered.
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:
Classes 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45:
Marketing, sales promotion, sales and purchasing consultancy, market research and market analysis, business, organization, personnel and business consulting, advertising, including broadcast television advertising, cinema advertising, advertising documentation, public relations (publications); opinion research, organization of trade fairs and exhibitions for commercial or advertising purposes, consulting and furnishing of expert opinions on commercial and business sector, in particular for the food trade, exchange of information and know-how in the commercial and business sector, in particular for the food trade; procurement of contracts for the purchase and sale of goods, especially on narrow-band and wide-band online services (via pc with modem or via TV connections), services of an online provider, namely collecting, providing and communicating information in the form of data , text, images, sound or all combinations thereof on ongoing service and product offers, the electronic receipt of relevant orders and as well as their invoices; sales promotion, in particular through the development and implementation of multimedia marketing, sales and distribution techniques, inter alia, in the context of tele-shopping, tele, service, home shopping and interactive tele-shopping; finance, namely credit brokerage and financing of credit for wholesale and retail, financial and monetary affairs, in particular the implementation of payments, issuing of credit cards also as a means of payment; real estate, mortgage and leasing brokerage, procurement of insurance contracts; provision of financial resources in. enterprises, systems and equipment; financial advisory services relating to the aforesaid provision of financial resources; land, real estate, house and property management; operating cost accounting and control, monitoring of rental billings; services of a real estate agent, in particular the allocation and transfer of real estate, land, rented premises, provision of investors and tenants; rental and placement of office, conference, exhibition and lecture rooms; construction, particularly in the field of civil engineering and building construction; services of a property developer, namely planning, preparation and execution of foreign construction projects, particularly residential complexes, commercial buildings and mixed-use real estate, from organizational, financial and technical viewpoints, including the participation in public approval procedures; workmanship services to or in real estate, in particular commissioning of all technical systems, heating, air conditioning, plumbing, elevators, communications and electrical installation, maintenance of all the aforementioned technical equipment; facade and interior cleaning of premises; installation of hardware; services of an architect; creation of real estate inventory analysis and analysis of property held for economy and degree of efficiency; creation of location concepts for real estate projects; site preparation, namely, site analysis and preparation of land for construction by demolition, eviction and land development, development of concepts of use and risk studies for real estate; real estate consultancy in organizational and technical terms; engineering services; preparation of technical advice and expertise; technical advice and expertise; services in the field of building safety and security of real estate; services in the field of landscape and horticulture; activities carried out within the scope of winter service, namely storing and dispensing of salt and snow removal on public and private roads, paths and squares; telecommunications services, telecommunications as narrowband and broadband online services, in particular operating a teleshopping channel, telephone services, teletext services, transmission of data, text, sound and video, broadcast of tv or video also as an interactive program, as video on demand or pay per view; procurement and allocation of access authorization for users to various communication networks; installation of software; operation of networks for the transmission of messages, images, text, speech and data; collection and delivery of messages for the press, radio and television; procurement of multimedia marketing, sales and distribution techniques, in particular tele-shopping, tele-service, home shopping, interactive tele-shopping, procurement and marketing of TV or video films with modern means of communication and interactive television; construction and distribution of computer networks, rental of capacity on computer networks for online providers (content providers of different sectors, goods and services) and for producers of goods and providers of services; construction of computer data bases; goods logistics, namely the complete organization of the transport of goods from the manufacturer to the warehouse of the distributor and from the distributor to the end customer; procurement logistics in terms of procurement of air time on television stations; storage of goods; organization and arrangement of travel, arranging of transport services, organization of city tours, rental of garages and places, vehicles, delivery of parcels; collection, transport and sorting of waste and secondary raw materials; recovery and disposal of waste and secondary raw materials for others, even by dumping; recovery and disposal of waste and secondary raw materials for other, each by the use of chemical, physical and or biological methods such as recycling; training, education and advice for entrepreneurs and for clerks and apprentices of foreign companies, organization of trade fairs, seminars, conferences and correspondence courses on business areas; publication and editing of books, newspapers and magazines; publication of electronic catalogues; organization of sports competitions, amusements; consulting of companies that produce packaging and/or packaging materials and/or use packaging in the development, selection and in the use of ecologically sound and economically recyclable packaging and packaging materials and in the labelling of such packaging and packaging materials; advice for consumers and businesses in environmental and waste management issues, such as advice on waste prevention as well as the collection, transport, sorting, recycling and disposal of waste and secondary raw materials for others by the means of combustion; organization of presentations and exhibitions for cultural or educational purposes as well as for commercial purposes, for customer care and acquisition of customers, all of these in particular in the field of real estate and property management system; rental of data processing equipment; creation of programs for data processing; development, technical construction and construction of software, operation and maintenance of voice and data networks for entrepreneurs and for consumers, in particular leasing access time to databases, development, technical construction and construction of software and operation of computer networks, rental of access time to computer networks, rental of capacity on computer networks for content, providers (content providers) of different sectors (goods and services) and for producers of goods and providers of services; creating accounting and information systems; hospitality and catering for guests, party services, franchising services, namely providing of business and organizational know-how in the establishment and management of retail stores; management and exploitation of copyrights.
The contested goods are the following:
Class 20: Bedding (except linen), pillows, bolsters, cushions; fittings for curtains; curtain tie-backs; fabric blinds.
Class 24: Textile goods; household textiles; household textile articles; bedroom textile fabrics; bed linen, bed covers, bed spreads, bed sheets, fitted bed sheets, pillow cases, pillow covers, covers for mattresses, valances, duvets, duvet covers, blankets, quilts, bed quilts, quilt covers, eiderdowns; throws and bed throws; comforters; cushion covers; curtains; curtain linings; curtain fabric; linen; household linen; table linen; bath linen; towels; hand towels; face cloths.
Class 25: Clothing, footwear, headgear; bath robes.
Contested goods in Class 20, 24 and 25
The contested goods are mainly furnishing and bedding goods in Class 20; traditional textile and fabric goods for household use in Class 24 and goods for covering and protecting parts of the human body in Class 25.
The opponent’s services in Class 35 cover activities intended to directly assist in the operation and management of another commercial or industrial enterprises by giving assistance to others in the sale of their goods and services, by promoting their launch and/or sale, or by reinforcing a client’s position in the market and acquiring competitive advantage through publicity. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing their goods and services, creating a personalised strategy for advertising them.
The opponent’s services in Class 36 are mainly related to finance, real estate transactions and insurance services.
The opponent’s services in Class 37 are specialized services directly related to the operation and management of physical construction and installations of buildings, and their repair, maintenance, renovation and demolition.
The opponent’s services in Class 38 are telecommunications services by which one party can communicate with another through different means.
The opponent’s services in Class 39 are related to the movement of goods or persons.
The earlier mark also covers services in Class 40, which are very specific services mainly related to the recovery and disposal of materials, provided by waste management industries, such as reuse and recycling companies.
The opponent’s services in Class 41 are services directed at imparting knowledge through teaching and instruction, as well as services having the basic aim of entertainment, amusement or recreation and publication.
The earlier mark also covers services in Class 42, rendered by consulting companies, in relation to the theoretical and practical aspects of complex fields of activities, such as packaging design, research in the field of environmental protection or provision of scientific information, advice and consultancy in relation to environmental and waste management issues.
The opponent’s services in Class 43 cover activities related to the provision of food and drink, whereas those in Class 44 relate to the cultivation and growing of plants.
Finally, the earlier mark also covers services in Class 45 which are related to the commercial exploitation of copyright related rights.
The contested goods in Classes 20, 24 and 25 do not have anything in common with any of the opponent’s services in Classes 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45, described above. They differ in nature because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist in the provision of intangible activities. They do not coincide in their commercial origin or distribution channels. The opponent’s services, as explained above, are very specific services covering a large range of activities and provided by specialized companies in different fields, which do not coincide with those manufacturing the contested textile or fashion goods. Furthermore, these goods and services are not complementary or in competition with each other. Consequently, the contested goods are dissimilar to all the services of the earlier mark.
- 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.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
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 | Anunciata SEVA MICO | Begoña URIARTE VALIENTE |
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.