AGM | Decision 2670316
Date Published: Oct 11, 2017
OPPOSITION No B 2 670 316
Augusto Gonçalves Moreira, Rua Pousata, 322 Perosinho, 4415 Carvalhos - Vila Nova de Gaia, Portugal (opponent), represented by A.G. Da Cunha Ferreira, Lda., Avenida 5 de Outubro, 146-7º, 1050-061 Lisboa, Portugal (professional representative)
a g a i n s t
AGM 1960 Srl, Via Giuseppe Zanardelli 16, 00186 Roma, Italy (applicant)
On 24/03/2017, the Opposition Division takes the following
1. Opposition No B 2 670 316 is rejected in its entirety.
2. The opponent bears the costs.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 872 841. The opposition is based on European Union trade mark registration No 5 128 525. The opponent invoked Article 8(1)(b) EUTMR.
Earlier trade mark
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 6: Doors of metal and profiles of metal.
Class 37: Assembly, repair and setting of metal doors and automatic devices; after-sales technical assistance (not included in other classes) relating to metal doors and automatic devices.
The contested goods and services are the following:
Class 7: Lifts, other than ski-lifts; Lifting platforms; Elevating apparatus; Hydraulic lifts; Boat lifts; Mechanical lifts; Frames being parts of hydraulic elevators; Vehicle lifts; Power-operated lifts for moving, parking and storing land vehicles.
Class 37: Lift installation.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.
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 7
The contested goods are very specific machines being lifts and parts of lifts, whereas the opponent’s goods in Class 6 are metal building materials, namely doors of metal and profiles of metal. In particular, it is noteworthy that lift doors would not be included in the opponent’s doors of metal since they are classified in Class 7. Therefore, these goods in conflict are very different in nature and purpose, are produced by different companies and do not share the same distribution channels. They are also addressed to another public, the contested goods to consumers who need a machine to lift objects, persons or vehicles, while the opponent’s goods target rather professionals in the building industry that use the opponent’s goods in the building of houses and other kinds of buildings. Moreover, these goods have a different method of use and are neither complementary nor in competition. Therefore, they are dissimilar.
The same conclusions are reached in relation to the opponent’s services in Classes 37 which concern metal doors. To this must be added here that by their nature, goods are generally dissimilar to services, because goods are articles of trade, wares, merchandise, or real estate. Their sale usually entails the transfer of title in something physical, that is, movables or real estate. Services, on the other hand, consist in the provision of intangible activities.
The opponent’s services in Class 37 also cover assembly, repair, setting and after-sales technical assistance in relation to automatic devices.
It should be recalled that since by nature goods and services are dissimilar, a similarity between goods and installation, maintenance and repair of these specific goods can only be established when the three cumulative conditions are fulfilled:
- it is common in the relevant market sector for the manufacturer of the goods to also provide such services; and
- the relevant public coincides; and
- installation, maintenance and repair of these goods are provided independently of the purchase of the goods (not aftersales services).
In the present case, it can already be seen that the contested goods do not coincide with the goods that are the subjects of the opponent’s services. Indeed, it has to be noted that an automatic device is a device which does not require intervention, human or otherwise. It may have self-acting and/or self-regulating mechanisms, and utilize an autonomous information processing system -> an automatic dialer, a device which automatically dials telephone numbers (http://www.dictionaryofengineering.com). Therefore, an automatic device does not include the contested different types of lifts in Class 7. In addition, it can be noted that in any case the expression ‘automatic devices’ is an extremely large and vague category. It encompasses too many different goods that the criteria of similarity could be analysed. Notably, there would be a risk of finding a link between goods that are totally different.
Given all of the above, the contested goods are also dissimilar to all the opponent’s services in Class 37.
Contested services in Class 37
Reference is made to the previous considerations, especially the different definitions and natures of the goods and services, such as doors of metal and automatic devices.
The contested lift installation services are dissimilar to the opponent’s goods in Class 7. In particular, doors of metal do not cover lift doors and thus, do not have any link with the installation of lifts. Indeed, they differ in their nature and purpose and are provided/produced by different undertakings and distributed via different channels. Moreover they are not in competition or complementary with/to each other.
Likewise, the contested services are dissimilar to the opponent’s services in Class 37. The earlier mark is registered for setting services in Class 37, which may refer to installation or adjustment services. The mere fact that the services at issue are installation services is far from enough for a finding of similarity considering the differences between the goods subject to the services. Indeed, it has been pointed out above that lifts are very different from doors of metal and profiles of metal. Moreover, in the present relevant market sectors, it is absolutely not common for the provider of installation of lifts to also provide the assembly, repair, setting and after-sales technical assistance of metal doors and automatic devices. Furthermore, these services do not have a similar method of use. Finally, they do not come from the same providers, via similar distribution channels and they are not in competition with one another, are not interchangeable and they cannot be considered complementary.
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.
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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
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.