OPPOSITION No B 2 837 022

Mac-Johnson Controls Colombia, S.A.S. MAC-JCI, Carrera 35 No. 10-300 Acopi, Yumbo – Valle, Colombia (opponent), represented by Claudio Prat Peñas, Ronda Ocho de Marzo número 77, 1º 2º, 08390 Montgat (Barcelona), Spain (professional representative)

a g a i n s t

Vaucluse Diffusion, 384 rue des Artisans, 84420 PIOLENC, France (holder), represented by Fidal Société D'avocats, 18 rue Félix Mangini - CS 99172, 69263 Lyon cedex 09, France (professional representative).

On XX/XX/XXXX, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 837 022 is partially upheld, namely for the following contested services:

Class 35: Presentation of goods on communication media, for retail purposes; Administrative and commercial management of a shop or shopping centre; Sales promotion and advertising for merchants with premises in shopping arcades; Organisation of exhibitions and events for commercial or advertising purposes; Promotion of goods for others.

2. European Union trade mark application No 15 680 424 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 680 424 , namely against some of services in Class 35. The opposition is based on European Union trade mark registration No 4 122 834, for the word mark ‘MAC’, European Union trade mark registration No 4 027 587, for the figurative mark and European Union trade mark registration No 12 407 615, for the word mark MAC POWER PACK GOLD PLUS. The opponent invoked Article 8(1)(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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 4 122 834, ‘MAC’.

1. The goods and services

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

Class 9: Batteries for vehicles, excluding batteries for computers.

Class 35: Advertising, business management, business administration, office functions, purchasing, sales, import, export, commercial representation services for products, including batteries and vehicle products in general, excluding wheel rims for vehicles.

The contested services are the following:

Class 35: Presentation of goods on communication media, for retail purposes; Administrative and commercial management of a shop or shopping centre; Sales promotion and advertising for merchants with premises in shopping arcades; Organisation of exhibitions and events for commercial or advertising purposes; Promotion of goods for others; Commercial information and advice for consumers (consumer advice shops).

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 contested administrative and commercial management of a shop or shopping centre is included in the broad categories of the opponent’s business management, business administration. Therefore, they are identical.

The contested presentation of goods on communication media, for retail purposes; sales promotion and advertising for merchants with premises in shopping arcades, organisation of exhibitions and events for commercial or advertising purposes; promotion of goods for others are professional events organised by a specialised service provider in which to facilitate or encourage the promotion and sale of the client’s goods and services that can be offered to third parties, for example the organisation, arranging and conducting of an exhibition or trade fair on their behalf. The opponent’s advertising consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Therefore, the services under comparison have the same nature and the same general purpose. They are provided by the same specialised companies, have the same distribution channels and target the same relevant public. Furthermore, they are complementary. Consequently, these services are similar.

The contested commercial information and advice for consumers (consumer advice shops) refer to outlets that provide consumers with advice such as explaining their statutory rights regarding purchases of goods or services. The opponent‘s services which refer to a wide range of business activities such as advertising, business management, business administration, office functions, purchasing, sales, import and export have a different nature, purpose and methods of use when compared to the contested services. They also have different origins and consumers. Consequently, these services are considered dissimilar to the opponent’s services in Class 5.

As regards the opponent’s goods in Class 9, they are even more different from the contested services of commercial information and advice for consumers (consumer advice shops) and clearly have no link whatsoever with these services.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the relevant services are specialised services directed at business customers with specific professional knowledge or expertise namely companies or business owners. Due to the degree of sophistication and the cost of some of the business-related services, their infrequent purchase and the serious and long-term impact they may have on the purchaser’s business, the relevant public’s degree of attention in relation to these services will be higher than average.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested [goods][services][goods and services], both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Co-signer 1 [Name SURNAME]

Arkadiusz GORNY

Co-signer 2 [Name SURNAME]

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.