OPPOSITION No B 2 481 094

Philippe Maynial, 47 rue de Babylone, 75007 Paris, France (opponent)

a g a i n s t

Jointherapeutics S.R.L., Piazza del Popolo, 1, 22100 Como, Italy (applicant), represented by Notarbartolo & Gervasi S.P.A., Galleria Europa 3, 35137 Padova, Italy (professional representative).

On 27/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 481 094 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 13 708 623 for the word mark ‘ARTY’. The opposition is based on European Union trade mark registration No 13 067 285 ‘Be Arty’. 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.

1. The goods and services

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

Class 3: Toiletries; tailors' and cobblers' wax; essential oils and aromatic extracts; abraders; cleaning and fragrancing preparations; animal grooming preparations.

Class 12: Vehicles and conveyances.

Class 20: Furniture and furnishings; displays, stands and signage; containers, and closures and holders therefor; statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class; animal housing and beds; yellow amber; whalebone, unworked or semi-worked; bamboo; ambroid bars; coral; coral [unworked or partly worked]; cork bands; horn, unworked or semi-worked; animal housing and beds; furniture and furnishings; fasteners; door, gate and window fittings; stacking adaptors non-metallic fittings; ring closures, other than of metal; rings for bulls' noses [non- metallic]; wooden handles; step ladders made of wood; steps [ladders], not of metal; boarding stairs, not of metal, mobile, for passengers; kick step; ladders of wood or plastics; ladders made of glass fibre; ladders made of plastics.

Class 25: Headgear; footwear; clothing.

Class 30: Coffee, teas and cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; processed grains, starches, and goods made thereof, baking preparations and yeasts; salts, seasonings, flavourings and condiments; baked goods, confectionery, chocolate and desserts; sugars, natural sweeteners, sweet coatings and fillings, bee products; prepared foodstuffs in the form of sauces; prepared savoury foodstuffs made from potato flour; filled baguettes; rice biscuits; crackers flavoured with herbs; crackers flavoured with spices; crackers flavoured with meat.

Class 32: Beer and brewery products; non-alcoholic beverages; preparations for making beverages.

Class 33: Alcoholic beverages (except beer); preparations for making alcoholic beverages.

Class 43: Provision of food and drink; rental of furniture, linens and table settings; temporary accommodation; animal boarding.

Class 45: Safety, rescue, security and enforcement services; legal services; rental of clothing; astrological and spiritual services; detective services; baby-sitting; pet sitting; lost property return; colour analysis for personal appearance; chaperoning; religious services; funerary services; dating services.

The contested goods are the following:

Class 5: Dietetic supplements adapted for medical use; dietary supplements for human and veterinary use.

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.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 opponent´s goods in Class 3 include a variety of items relating to cosmetics, personal hygiene, fragrancing and general cleaning or polishing. Toiletries; animal grooming preparations are all those preparations or substances used to beautify, groom or otherwise improve the appearance or condition of an animal or human. Essential oils and aromatic extracts are all related to oil products for beauty purposes. Tailors' and cobblers' wax are used for waxing thread in relation to the production/repair of clothing and footwear. Abraders; cleaning and fragrancing preparations are all those items whose purpose is to remove dirt, to polish or to give a pleasant smell.

The opponent´s goods in Class 12, Vehicles and conveyances, cover all those items related to the transport of people, animals, or things from one place to another.

Moreover, the earlier goods in Class 20 include a range of goods mainly furniture and its parts and plastic goods. They can be classified under the following categories: Furniture and furnishings; display, stands and signage; containers and closures and holders therefore, statues, figurines, works of art and ornaments and decorations, made if materials such as wood, wax, plaster or plastic, included in the class; animal housing and beds; unprocessed and semi-processed materials included in this class, not specified for use under which yellow amber; whalebone, unworked or semi-worked; bamboo; ambroid bars; coral; coral [unworked or partly worked]; horn, unworked or semi-worked; cork bands fall; non-metallic hardware which includes fasteners; door, gate and window fittings; stacking adaptors non-metallic fittings; ring closures, other than of metal; rings for bulls' noses [non-metallic]; wooden handles; ladders and movable steps, non-metallic which includes step ladders made of wood; steps [ladders], not of metal; boarding stairs, not of metal, mobile, for passengers; kick step; ladders of wood or plastics; ladders made of glass fibre; ladders made of plastics. These goods are distributed through specific channels and are manufactured by specific undertakings.

Headgear; footwear; clothing in Class 25 protected by the earlier mark are those products used for covering and protecting parts of the human body and for fashion.

On the other hand, the earlier goods in Class 30 mainly include foodstuffs of plant origin prepared for consumption or conservation as well as auxiliaries intended for the improvement of the flavour of the food. It refers to a wide range of products from beverages with coffee, cocoa or tea to condiments, bakery, seasoning, processed grains or ices.

The opponent´s goods in Class 32 include beers which are alcoholic drinks made from yeast-fermented malt flavoured with hops; alcohol free drinks and all those substances added to produce beverages.

The earlier goods in Class 33 include alcoholic beverages (except beer) which contain a substantial amount of alcohol, and also all those preparations added to produce alcoholic drinks.

The opponent´s services provision of food and drink; temporary accommodation in Class 43 consists mainly of services provided by persons or establishments whose aim is to prepare food and drink for consumption and services provided to obtain bed and board in hotels, boarding houses, or other establishments providing temporary accommodation respectively. This includes those offers for animals such as boarding for animals. The earlier services rental of furniture, linens and table settings are those often provided in conjunction with the provision of food and drink in a catering setting or in the context of a temporary accommodation. They are provided by specialised companies and have specific distribution channels.

Generally speaking, services in Class 45 consist of those rendered by others to meet the needs of individuals. The opponent´s services in Class 45 can be classified in three main categories: investigations and surveillance services relating to the safety of persons and entities (safety, rescue, security and enforcement services), services rendered by lawyers to individuals, group of individuals, organisations and enterprises (legal services) and services provided to individuals in relation with social events, such as social escorts services, matrimonial agencies, funeral services (rental of clothing; astrological and spiritual services; detective services; baby-sitting; pet sitting; lost property return; colour analysis for personal appearance; chaperoning; religious services; funerary services; dating services). Different professionals and companies are involved in the provision of those services.

On the other hand, the contested dietetic supplements adapted for medical use are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. They serve a specific medical purpose and are usually consumed for medicinal purposes. In the same sense, the applicant´s dietary supplements for human and veterinary use are all those substances meant to augment or, as their name indicates, supplement the nutritional value of the normal diet of a human being or animal. These goods move through specialised channels such as health shops, pharmacies and drug stores. Moreover, they are manufactured by specialised undertakings that normally do not involve in the production of foodstuffs in general.

In the present case, the contested dietetic supplements adapted for medical use; dietary supplements for human and veterinary use are different to all the opponent´s goods and services included in Classes 3, 12, 20, 25, 30, 33, 43 and 45. The contested goods are used to improve the health conditions of human beings or animals which is not the purpose of the opponent´s goods and services.

Furthermore, the goods and services under comparison are different in nature. They are neither complementary nor in competition. Moreover, they are manufactured or provided by different undertakings and distributed through different channels. They are therefore, dissimilar.

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 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

Solveiga BIEZA

Carmen SANCHEZ PALOMARES

Martina GALLE

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.