OPPOSITION No B 2 631 284

Coto C.I.C.S.A., Paysandú 1842/48, Capital Federal Buenos Aires 1416, Argentina (opponent), represented by Disain IP, Avda. La Goleta, 17, Esc. 2, 2ºC, 03540 Alicante, Spain (professional representative)

a g a i n s t

Incoin Holding B.V., Groteweg 9, 1756CK 't Zand, the Netherlands (applicant), represented by Bartłomiej Henryk Tomaszewski, Ul. Eugeniusza Kwiatkowskiego 1 lok 12, 03-984 Warszawa, Poland (professional representative).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 631 284 is partially upheld, namely for the following contested services:

Class 35: Commercial business management consultancy, commercial business management, commercial business organisation and management consultancy; Obtaining and providing access to commercial business information; personal management consultancy; wholesaling and retailing of decorative articles, landscape architecture and accessories for gardens, flower pots, plants, topsoil, fertilisers, garden substrates, pools for gardens and fittings therefor, tools and materials for building, electronic equipment, telecommunications equipment, computers, computer accessories, software, computer games, household appliances and radio and television equipment, books and magazines, stationery, office requisites, dietary supplements and foodstuffs, supplements for children, pharmacological and pharmaceutical preparations, medical dressings, sanitary preparations, articles and accessories for children, namely educational equipment and playthings, car seats, pushchairs, furniture, clothing, children's clothing, footwear, headgear, textiles, playthings, sports equipment, bicycles, sleighs, vehicles for children, scooters, cosmetics and cleaning preparations; wholesaling and retailing via the internet, including via online auction services, of decorative articles, landscape architecture and accessories for gardens, flower pots, plants, topsoil, fertilisers, garden substrates, pools for gardens and fittings therefor, tools and materials for building, electronic equipment, telecommunications equipment, computers, computer accessories, software, computer games, household appliances and radio and television equipment, books and magazines, stationery, office requisites, dietary supplements and foodstuffs, supplements for children, pharmacological and pharmaceutical preparations, medical dressings, sanitary preparations, articles and accessories for children, namely educational equipment and playthings, car seats, pushchairs, furniture, clothing, children's clothing, footwear, headgear, textiles, playthings, sports equipment, bicycles, sleighs, vehicles for children, scooters, cosmetics and cleaning preparations; Provision of commercial information; Organisation of trade fairs and exhibitions for commercial and advertising purposes; Business inquiries; Computerized file management; Compilation and systemisation of information into computer databases, systemisation of information into computer databases; Computerised file management.

2. European Union trade mark application No 14 184 204 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 14 184 204, namely against all the services in Class 35. The opposition is based on European Union trade marks No 13 652 755 and No 1 326 966. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based- European Union trade marks No 13 652 755 and No 1 326 966.

In the present case the contested trade mark was published on 28/09/2015.

In relation to earlier European Union trade mark No 13 652 755 the request of proof of use is inadmissible as this mark has been registered on 31/01/2017.

However, the request was filed in due time and is admissible insofar earlier European Union trade mark No 1 326 966 as this earlier trade mark was registered more than five years prior to the relevant date mentioned above.

On 04/08/2016, the opponent was given two months to file the requested proof of use.

The opponent did not furnish any evidence concerning the use of the earlier trade mark on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office shall reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR as far as the European Union trade mark No 1 326 966 is concerned.

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 services

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

Class 35: Business services and consumer information, namely retail and wholesale services in connection with foodstuffs, alcohol and non-alcoholic beverages, sanitary, washing and scouring preparations, preparations for care of the body and beauty treatments, computers, telecommunications equipment, writing implements, decorative articles, namely decorative objects and ornaments, paintings and pictures, decorative letters, stickers, decorations for Christmas trees, office requisites, furs, travel articles, namely travelling bags, suitcases, handbags, vanity cases, backpacks, trunks, notecases, luggage carriers, umbrellas, furniture, articles for animals, household or kitchen articles, namely household or kitchen utensils and containers, tableware and cutlery, glassware, porcelain and earthenware and household electric appliances, clothing, footwear, carpets, sporting articles and playthings; Arranging of collective buying; price comparison services; procurement services, for others; arranging of subscriptions, issuing of cards enabling the collecting of points through purchases, to be exchanged for goods or services.

The contested services are the following:

Class 35: Commercial business management consultancy, commercial business management, commercial business organisation and management consultancy; Obtaining and providing access to commercial business information; personal management consultancy; wholesaling and retailing of decorative articles, landscape architecture and accessories for gardens, flower pots, plants, topsoil, fertilisers, garden substrates, pools for gardens and fittings therefor, tools and materials for building, electronic equipment, telecommunications equipment, computers, computer accessories, software, computer games, household appliances and radio and television equipment, books and magazines, stationery, office requisites, dietary supplements and foodstuffs, supplements for children, pharmacological and pharmaceutical preparations, medical dressings, sanitary preparations, articles and accessories for children, namely educational equipment and playthings, car seats, pushchairs, furniture, clothing, children's clothing, footwear, headgear, textiles, playthings, sports equipment, bicycles, sleighs, vehicles for children, scooters, cosmetics and cleaning preparations; wholesaling and retailing via the internet, including via online auction services, of decorative articles, landscape architecture and accessories for gardens, flower pots, plants, topsoil, fertilisers, garden substrates, pools for gardens and fittings therefor, tools and materials for building, electronic equipment, telecommunications equipment, computers, computer accessories, software, computer games, household appliances and radio and television equipment, books and magazines, stationery, office requisites, dietary supplements and foodstuffs, supplements for children, pharmacological and pharmaceutical preparations, medical dressings, sanitary preparations, articles and accessories for children, namely educational equipment and playthings, car seats, pushchairs, furniture, clothing, children's clothing, footwear, headgear, textiles, playthings, sports equipment, bicycles, sleighs, vehicles for children, scooters, cosmetics and cleaning preparations; sales promotion; provision of commercial information; online advertising on a computer network; publication of publicity texts; radio- and TV- advertising; organisation of trade fairs and exhibitions for commercial and advertising purposes; dissemination and distribution of advertising matter; business inquiries; marketing and presentation; demonstration of goods and presentation of services for commercial or advertising purposes; sales promotion; rental of advertising space; updating of advertising material; computerized file management; compilation and systemisation of information into computer databases, systemisation of information into computer databases; computerised file management.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘namely’, used in parties list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

The term ‘including’ used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 wholesaling and retailing of decorative articles, wholesaling and retailing via the Internet, including via online auction services, of decorative articles are identical to the opponent’s retail and wholesale services in connection with decorative articles, namely decorative objects and ornaments.

The contested wholesaling and retailing of cosmetics, wholesaling and retailing via the internet, including via online auction services, of cosmetics overlap with, the opponent’s retail and wholesale services in connection with preparations for care of the body and beauty treatments. They are considered identical to the opponent’s services.

The contested wholesaling and retailing of cleaning preparations, wholesaling and retailing via the internet, including via online auction services, of cleaning preparations includes, as a broader categories, or overlap with, the opponent’s retail and wholesale services in connection with washing preparations. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested wholesaling and retailing of foodstuffs, wholesaling and retailing via the internet, including via online auction services, of foodstuffs are identical to the opponent’s retail and wholesale services in connection with foodstuffs.

The contested wholesaling and retailing of sports equipment, wholesaling and retailing via the internet, including via online auction services, of sports equipment are identical to the opponent’s retail and wholesale services in connection with sporting articles.

The contested wholesaling and retailing of sanitary preparations, wholesaling and retailing via the Internet, including via online auction services, of sanitary preparations are identical to the opponent’s retail and wholesale services in connection with sanitary preparations.

The contested wholesaling and retailing of articles and accessories for children, namely playthings, playthings, wholesaling and retailing via the internet, including via online auction services, of articles and accessories for children, namely playthings, playthings are identical to the opponent’s retail and wholesale services in connection with playthings.

The contested wholesaling and retailing of furniture, wholesaling and retailing via the internet, including via online auction services, of furniture are identical to the opponent’s retail and wholesale services in connection with furniture.

The contested wholesaling and retailing of clothing, children's clothing, wholesaling and retailing via the internet, including via online auction services, of clothing, children's clothing are identical to the opponent’s retail and wholesale services in connection with clothing.

The contested wholesaling and retailing of footwear, wholesaling and retailing via the internet, including via online auction services, of are identical to the opponent’s retail and wholesale services in connection with footwear.

The contested wholesaling and retailing of office requisites, wholesaling and retailing via the internet, including via online auction services, of office requisites are identical to the opponent’s retail and wholesale services in connection with office requisites.

The contested wholesaling and retailing of landscape architecture and accessories for gardens, flower pots, wholesaling and retailing via the internet, including via online auction services, of landscape architecture and accessories for gardens, flower pots are included in or overlap with the opponent’s retail and wholesale services in connection with porcelain and earthenware. Therefore, they are identical.

The contested wholesaling and retailing of household appliances, wholesaling and retailing via the Internet, including via online auction services, of household appliances are identical to the opponent’s retail and wholesale services in connection with household electric appliances.

The contested wholesaling and retailing of computers, wholesaling and retailing via the internet, including via online auction services, of computers are identical to the opponent’s retail and wholesale services in connection with computers.

The contested wholesaling and retailing of telecommunications equipment, wholesaling and retailing via the Internet, including via online auction services, of telecommunications equipment are identical to the opponent’s retail and wholesale services in connection with telecommunications equipment.

The contested wholesaling and retailing of electronic equipment, wholesaling and retailing via the Internet, including via online auction services, of electronic equipment include, as broader categories, or overlap with, the opponent’s retail and wholesale services in connection with computers. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested wholesaling and retailing of radio and television equipment, wholesaling and retailing via the Internet, including via online auction services, of radio and television equipment are included in or overlap with the opponent’s broader category of retail and wholesale services in connection with telecommunications equipment. Therefore, they are identical.

The contested wholesaling and retailing of articles and accessories for children, namely educational equipment, wholesaling and retailing via the Internet, including via online auction services, of articles and accessories for children, namely educational equipment overlap with, the opponent’s retail and wholesale services in connection with computers. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested wholesaling and retailing of computer accessories, software, computer games, wholesaling and retailing via the internet, including via online auction services, of computer accessories, software, computer games are similar to the opponent’s retail and wholesale services in connection with computers. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

The contested wholesaling and retailing of headgear, wholesaling and retailing via the internet, including via online auction services, of headgear are similar to the opponent’s retail and wholesale services in connection with clothing. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they coincide in relevant public and distribution channels.

The contested wholesaling and retailing of dietary supplements, supplements for children, pharmacological and pharmaceutical preparations, medical dressings, Wholesaling and retailing via the internet, including via online auction services, of dietary supplements, supplements for children, pharmacological and pharmaceutical preparations, medical dressings are similar to the opponent’s retail and wholesale services in connection with sanitary preparations. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they coincide in relevant public and distribution channels.

The contested wholesaling and retailing of stationery, wholesaling and retailing via the internet, including via online auction services, of stationery are similar to the opponent’s retail and wholesale services in connection with office requisites. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they coincide in relevant public and distribution channels.

The contested wholesaling and retailing of plants, topsoil, fertilisers, garden substrates, pools for gardens and fittings therefor, tools and materials for building, books and magazines, car seats, pushchairs, textiles, bicycles, sleighs, vehicles for children, scooters, wholesaling and retailing via the internet, including via online auction services, of plants, topsoil, fertilisers, garden substrates, pools for gardens and fittings therefor, tools and materials for building, books and magazines, car seats, pushchairs, textiles, bicycles, sleighs, vehicles for children, scooters are considered similar to the opponent’s retail and wholesale services in connection with household or kitchen articles, namely household or kitchen utensils and containers. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

The contested commercial business management consultancy, commercial business management, commercial business organisation and management consultancy; obtaining and providing access to commercial business information; personal management consultancy; provision of commercial information; organisation of trade fairs and exhibitions for commercial and advertising purposes; business inquiries; are similar to the opponent’s procurement services, for others. They have a similar nature (business administration services) and purpose (to help their customers to carry out their business). Furthermore, they can coincide in origin, distribution channels and public.

The contested computerized file management; compilation and systemisation of information into computer databases, systemisation of information into computer databases; computerised file management are similar to the opponent’s arranging of subscriptions, issuing of cards enabling the collecting of points through purchases, to be exchanged for goods or services. These services have a similar nature and purpose as they are office function services that are aimed to maintain and improve efficiency and productivity within and organization. Furthermore, they can coincide in distribution channels and relevant public.

The contested sales promotion; online advertising on a computer network; publication of publicity texts; radio- and tv- advertising; dissemination and distribution of advertising matter; marketing and presentation; demonstration of goods and presentation of services for commercial or advertising purposes; rental of advertising space; updating of advertising material are dissimilar to the opponent’s services. They differ in origin, distribution channels and relevant public. Furthermore, they are neither complementary nor in competition.

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 services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is considered may vary from average to high depending on their exact nature, purpose and price.

3. The signs

COTO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the element ‘COTO’ means in Spanish ‘reserve’. It cannot be excluded that a part of the Spanish public could consider the double ‘O’ of ‘COOTO’ of the contested sign as an error in the writing of the word and associate it to the same meaning.

The Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The earlier mark is a word mark.

The contested sign is a figurative mark that consists of a figurative element consisting of the depiction of a stylised koala and the word ‘COOTO’ in rather standard characters.

The slight stylisation of the contested sign is merely decorative.

The contested sign has no elements that could be considered clearly more dominant than other elements. The marks are distinctive.

Visually, the signs coincide in the letters ‘C-O-*-T-O’. However, they differ in the additional letter ‘O’ and the figurative element and the slight stylisation of the contested sign.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs is almost identical as it will only differ in the fact that the sound of the letter ‘O’ in the contested sign will be a bit longer as it is double.

Therefore, the signs are highly similar.

Conceptually, taking into account what mentioned above, it is considered that the marks are conceptually similar to an average degree for a part of the relevant public in respect of the elements COTO/COOTO.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The services are partly identical, partly similar and partly dissimilar.

The marks are visually and conceptually similar to an average degree and aurally similar to a high degree.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, §  54).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly wellfounded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

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

The Opposition Division

María Clara IBÁÑEZ FIORILLO

Francesca CANGERI SERRANO

Erkki MÜNTER

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.