OPPOSITION No B 2 271 016

Epsilon Data Management LLC, 7500 Dallas Parkway, Suite 700, Plano, Texas 75024 United States of America (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Epsilon Technologies S.L., Avenida Torre Blanca, 57, 08172 Sant Cugat del Valles, Spain (applicant), represented by March & Asociados, Passeig de Gràcia, 103 7ª Planta, 08008 Barcelona, Spain (professional representative).

On 20/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition decision B 2 271 016 notified to the parties on 29/10/2014 is hereby revoked.

2. Opposition No B 2 271 016 is rejected in its entirety.

3. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of Community trade mark application No 11 910 213. The opposition was initially based on Community trade mark registration No 5 601 406, international trade mark registration No 1 001 702 designating the European Union and international trade mark registration No 1 130 231 designating the European Union. The opponent invoked Article 8(1)(b) CTMR. On 19/05/2014 the opponent withdrew international trade mark registration No 1 001 702 designating the European Union as a basis of the opposition. On 06/10/2015 the opponent withdrew international trade mark registration No 1 130 231 designating the European Union. Thus, the only remaining earlier trade mark is Community trade mark registration No 5 601 406.

The signs

EPSILON INTERNATIONAL
Earlier trade mark	Contested sign

DECISION ON THE REVOCATION – Article 80 CTMR

Where the Office has made an entry in the Register or taken a decision that contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked.

On 19/12/2014 the Office informed the parties in the present proceedings that it had the intention to revoke the decision of 29/10/2014 taken in the opposition proceedings No. B 2 271 016 which partially rejected the CTMA.

The reason was that the decision was based on international trade mark registration No 1 130 231 designating the European Union which was under opposition itself, i.e. did not have a grant of protection issued. This constituted an obvious procedural error attributable to the Office.

In accordance with Article 80 CTMR, the Office gave the parties one month to submit their observations. On 19/01/2015 the applicant agreed to the revocation. The opponent also replied on 19/01/2015 stating that there was no immediate need to revoke the decision for reasons of procedural economy because there were two pending cases in related proceedings, namely opposition No B 2 135 526 against international trade mark registration No 1 130 231 designating the European Union and Cancellation Action No. 9899C against CTM registration No. 8 914 855, which however is not an earlier right in the present opposition proceedings and thus it is entirely irrelevant whether a cancellation action was brought against that CTM.

On 29/12/2014 the opponent filed an appeal against the decision of the Office of 29/10/2014. As the opponent failed to submit any written statement with regard to the appeal it was rejected as inadmissible.

The earlier international trade mark registration No 1 130 231 designating the European Union was withdrawn on 06/10/2015 by the opponent. As one of the earlier rights mentioned by the opponent was withdrawn and the other earlier right is irrelevant to the case at hand, the arguments by the opponent against the revocation do not longer apply.

The decision adopted by the Opposition Division on 29/10/2014 in the opposition No B 2 271 016 is herewith revoked and replaced by the present decision.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The services

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.

The services on which the opposition is based are the following:

Class 39: Order fulfilment services, namely, receiving, assembling, selecting, packaging, consolidating and preparing merchandise and marketing collateral orders for shipment; tracking and monitoring of goods for others.

Class 42: Database development services; computer services, namely, designing and implementing web sites for others; custom design services for the direct marketing programs of others utilizing computer-generated information; web site analytic services, namely, assessing and analyzing web sites and web site usage for effectiveness in attracting and retaining customers; design, creating, and distribution of paper and electronic business forms; creative design and copy services for others, namely, creating and designing forms, logos, publications and marketing collateral for use in business operations, marketing and advertising.

The contested services are the following:

Class 35: Advice and consultancy relating to direct marketing and digital marketing; Carrying out marketing surveys, business communication relating to business management; Advertising, market management via data transmission means; Consultancy relating to market management; Sales promotional services; Consultancy for individuals and businesses for the assessment of the aptitudes and professional skills of personnel; Psychological testing for the selection of personnel; Assessment of the aptitudes and professional skills of personnel for the planning and execution of the outsourcing of services; Computerised file management; Business consultancy relating to business management, computer applications, computer programs and publications and downloadable electronic books.

Class 41: Training services; Arranging of courses, seminars, conferences, colloquiums, congresses and conventions; Publication of texts.

The contested services in Classes 35 and 41 relate to marketing services, advice and consultancy in relation to marketing and businesses, file management, psychological testing for the selection of personnel and sales promotion as well as training, seminars and conferences and the publication of texts. These services have nothing in common with the earlier services which relate to the preparation, tracking and monitoring of orders and the computer services and design services as well as website analytic services in Classes 39 and 42. They are addressed at different consumers, their nature and purpose are different and they are also not in competition. The services are therefore considered to be dissimilar.

2. Conclusion

According to Article 8(1)(b) CTMR, 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) CTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 85(1) CTMR, 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 (7)(d)(ii) CTMIR, 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

Sigrid DICKMANNS

Lars HELBERT

Richard BIANCHI

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.