OPPOSITION No B 2 486 549

Ingenieria y economía del transporte S.A. (INECO), Paseo de la Habana, 138, 28036 Madrid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Uab "Inžinerinė Ekologija", šv. Gertrūdos g., 68-4 44269 Kaunas, Lithuania (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 17/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 486 549 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 13 346 523 for the figurative sign .The opposition is based on the following Spanish trademark registrations: No 3 110 455 for the word mark ‘INECO’, No 3 110 456 for the figurative sign    and No 2 951 848 for the figurative sign   . The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARKS

According to the notice of opposition filed on 05/03/2015, the opponent based its opposition on, inter alia, the Spanish earlier mark No 3 110 455 for all of the registered services, namely for Classes 37 and 42. However, and according to the registration certificate submitted by the opponent, the former earlier right is registered for Classes 37, 39 and 42.

In this regards, is established that, where the opponent indicates in the opposition form that the opposition is based on ‘all goods and services for which the earlier right is registered’ but then lists only ‘part’ of these goods and services (when compared with the registration certificate or relevant official extract attached to the opposition form) the Office will, in order to overcome the contradictory information contained in the notice of opposition, assume that the opposition is based on ‘all goods and services for which the earlier right is registered’.

In addition, and according to the extract from the official database of the Spanish Patent and Trade mark Office that the opponent has submitted together with the notice of opposition, on the 24/04/2014 the Spanish mark No 3 110 455 was opposed by the trade mark No 2 291 516 against Class 37. On 16/07/2014 Class 37 of the Spanish earlier mark was refused.

However, on 05/03/2015, the opponent expressly informed the Office that ‘the Spanish registration No 3 110 455, marked as basis for the opposition #2, just claims Class 42 as services on which opposition is based’ and that Class 37 ‘was included by mistake’.

Therefore, the Opposition Division will examine the opposition, regarding the earlier mark No 3 110 455, for the remaining services on which the opposition is based, namely the services in Class 42.

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.

1. The goods and services

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

ES No 3 110 455:

Class 42: Engineering and technological services and research, design, planning and monitoring services of structures, infrastructure and buildings in the areas of civil, railway, aeronautical and naval engineering; study of technical projects, research on environmental protection, quality control; planning and consulting in the field of architecture; development of construction projects, testing and geological analysis, design of systems of engineering construction, analysis of structural behaviour of building materials, research on construction of buildings or urban planning, development software designed for use in construction and in the engineering; measurement of environmental conditions in structures of civil engineering; realization of engineering expertise.

ES No 3 110 456:

Class 37: Construction services, consulting services on construction, supervision (management) for construction works, information on construction, rental of machines and equipment for construction, repair and conservation of premises and buildings. Information on repairs. building cleaning services (interior and exterior surfaces); installation services performed in construction of premises and buildings.

Class 42: Engineering and technological services and research, design, planning and monitoring services of structures, infrastructure and buildings in the areas of civil, railway, aeronautical and naval engineering; study of technical projects, research on environmental protection, quality control; planning and consulting in the field of architecture; development of construction projects, testing and geological analysis, design of systems of engineering construction, analysis of structural behaviour of building materials, research on construction of buildings or urban planning, development software designed for use in construction and in the engineering; measurement of environmental conditions in structures of civil engineering; realization of engineering expertise.

ES No 2 951 848:

Class 42: Scientific and technological services and research and design services referred to the same; services and analysis of industrial research; design and development of computers and software.

The contested goods are the following:

Class 1: Chemicals used in industry; chemical reagents, other than for medical or veterinary purposes.

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.

It is clear that the contested goods include, primarily, chemical products for use in industry or other general applications, excluding medical or veterinary purposes. On the other hand, the opponent’s services in Classes 37 of the earlier mark No 3 110 456 are services that include mainly services rendered by contractors or sub-contractors in the construction or making of permanent building, in other words, these services provide or include services that involve the physical construction of buildings. They also include services that are closely related to building construction, such as construction consultation and supervision. In addition, they also include maintenance services and cleaning services. Furthermore, the services in Class 42 of all of the earlier marks, include mainly services that actually and directly relate to the disciplines of science and technology. They are provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities such as building/construction field (in case of services of the earlier marks No 3 110 455 and 3 110 456). Such services are provided by members of professions such as engineers or scientists.

By applying the relevant factors specified above, it follows that the contested goods are dissimilar to all the services covered by all of the earlier marks in Classes 37 and 42. This is because the sale of goods entails the transfer of title in something physical while services consist of the provision of intangible activities. Although the manufacturers of the applicant’s goods can be involved in some of the opponent’s services, such as research, they usually do not provide such services to third parties. These goods and services are different in nature, distribution channels and end users. Moreover, the purpose and method of use of these services are totally different to the ones displayed when manufacturing chemical compounds. These goods and services are also not complementary or in competition.

2. 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.

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.

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

Anna BAKALARZ

Volker Timo MENSING

Vít MAHELKA

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.