COLOREX | Decision 2741059
Date Published: Oct 2, 2017
OPPOSITION No B 2 741 059
Colorex Comércio e Desenvolvimento de Produtos Ltda., Rua Deputado Vicente Penido, No. 6, Vila Guilherme, São Paulo 02064-120, Brasil (opponent), represented by Schoppe, Zimmermann, Stöckeler, Zinkler, Schenk & Partner mbB Patentanwälte, Radlkoferstr. 2, 81373 München, Germany (professional representative)
a g a i n s t
Pebeo (Société Anonyme), Zone d'Entreprises, Avenue du Pic de Bretagne, 13420 Gemenos, France (applicant), represented by Cabinet Marek, 28 rue de la Loge, 13002 Marseille, France (professional representative).
On 28/06/2017, the Opposition Division takes the following
1. Opposition No B 2 741 059 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 286 206 ‘COLOREX’. The opposition is based on European Union trade mark registration No 14 993 018 ‘COLOREX’. The opponent invoked Article 8(1)(a) and (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 goods and services on which the opposition is based are the following:
Class 21: Houseware, kitchenware, dining set, baking pan, salad recipient, mugs, plates, cups, dessert cups, platters, cup saucers, glasses, kitchen molds, bowl sets, plate sets, dessert sets, glass jars, glass pots, coffee sets, tea sets, platter covers, pot covers, mold covers, butter recipients, vessels, feijoada recipients, tureen (soup bowl), tureen covers, pizzas molds, sugar recipients, ice bucket, domestic trays, plate bases, glass recipients for kitchen use.
Class 35: Commercialization, importation and exportation of houseware, kitchenware, dining set, baking pan, salad recipient, mugs, plates, cups, dessert cups, platters, cup saucers, glasses, kitchen molds, bowl sets, plate sets, dessert sets, glass jars, glass pots, coffee sets, tea sets, platter covers, pot covers, mold covers, butter recipients, vessels, feijoada recipients, tureen (soup bowl), tureen covers, pizzas molds, sugar recipients, ice bucket, domestic trays, plate bases, glass recipients for kitchen use.
The contested goods are the following:
Class 16: Ink, Inks for writing, Inks for drawing, Indian inks, Ink sticks, Watercolour inks, erasers for drawing, velvety inks for drawing.
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 16
The contested goods are different kinds of inks (a colored fluid used for writing, drawing or printing) and erasers for drawing (a piece of soft rubber or plastic, used to rub out something written).
The opponent’s goods in Class 21 are different kinds of household or kitchen utensils and containers and the opponent’s services in Class 35 relate to the commercialization, importation and exportation of these goods.
These goods are dissimilar since they have different natures, purposes, methods of use, manufacturers and distribution channels. Contrary to the opponent’s point of view, the fact that all these goods are sold in supermarkets to the same public is not sufficient for finding a similarity since they are sold in different sections of supermarkets. Furthermore, they are not in competition or complementary to each other.
The contested goods are also dissimilar to the opponent’s services in Class 35. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs.
Commercialisation of goods consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. Similarity between commercialisation of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved by both marks are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.
Importation and exportation services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements and are usually preparatory or ancillary to the commercialisation of goods. In the present case, they do not even relate to the same goods as the contested sign.
Therefore, these goods and services have different purposes, methods of use, manufacturers/providers and are neither in competition nor complementary.
Therefore, the contested goods are dissimilar to all the opponent’s goods and services.
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.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the goods and services are obviously not identical.
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
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.