OPPOSITION No B 2 633 645

Tjark Auerbach, Lindauer Strasse 21, 88069 Tettnang, Germany (opponent), represented by Anwaltskanzlei Helmut Becker, Rheinsteig 9, 78462 Konstanz, Germany (professional representative)

a g a i n s t

Juan José Cañizares Verdete, Miguel de Unamuno nº13, 03202 Elche (Alicante), Spain (applicant), represented by Ibidem Abogados Estrategas, S.L.P., Juan de la Cierva, 43, Elche Parque Empresarial, Planta 2, local 1.1, 03203 Elche (Alicante), Spain (professional representative).

On 09/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 633 645 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 450 605. The opposition is based on international trade mark registration No 904 714 designating the European Union, Romania, Bulgaria and Croatia. The opponent invoked Article 8(1)(b) EUTMR.

Earlier trade mark	Contested sign

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 9: Computer programs and parts and fittings therefor, namely subprograms, program modules, program generators, support software and interfaces for computers; data recorded on data carriers.

Class 38: Collection and supply of news; electronic transmission of data; running of an electronic information and communication system (transmission services); transmission of information through online services in the Internet; placing and/or access facilities for databases.

Class 41: Education, training, writing, publishing and editing of publications (except advertising) using all media.

Class 42: Renting of access time facilities for databases, computer programming for data processing; technical consultation regarding use and application of software; installation and maintenance of computer software; services of a software company, namely planning, design, creation, programming, updating, maintenance and installation of software, system analysis and consultation for application regarding software as well as technical consultation and technological services for support and implementation in order to fix data structures and their modifications; services in connection with the Internet, namely design and maintenance of programs for use in the Internet and/or for use of Internet as well as consultation concerning the use and further development of such programs.

Class 45: Security consultancy for the protection of real value and individuals.

The contested services are the following:

Class 35: Commercial and professional information agencies; recruitment information services; professional referral services; providing and facilitating the sharing of business and career information intended to enhance opportunities for business and professional advancement, through internet websites; compilation, provision and updating of a business and recruitment database for the use of subscribers.

Class 45: Babysitting; information networking relating to professional child minders.

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

The term ‘namely’, used in the opponent’s list of goods and 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 goods and services.

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 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.

Contested services in Class 35

The contested commercial and professional information agencies; recruitment information services; professional referral services; providing and facilitating the sharing of business and career information intended to enhance opportunities for business and professional advancement, through internet websites; compilation, provision and updating of a business and recruitment database for the use of subscribers are, in principle, services usually rendered by specialised companies (e.g. business and personnel consultants) that gather information and provide tools and expertise to enable their customers to carry out their business and to help them to find suitable staff to meet their needs and requirements. These companies also provide businesses with the necessary support to acquire, develop and expand market share and professional assistance and consultancy in the area of employment and recruitment.

The opponent’s goods and services include computer software in Class 9 (i.e. programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation), data transmission services and services relating to access to databases in Class 38, educational and publishing-related services in Class 41, services concerning rental of access time to databases and software-related services (e.g. programming, design, installation, maintenance and updating of software, and software consultancy) in Class 42 and security consultancy for personal and property protection in Class 45.

Having carried out a comparison of the goods and services in question, the Opposition Division can find nothing in common between the contested services in Class 35 and the opponent’s goods and services in Classes 9, 38, 41, 42 and 45. These goods and services, as described in detail above, have different natures (goods and services are essentially different in nature), purposes (e.g. assisting companies in their business activities and staff affairs versus data transmission, education, creating and maintaining software and security consultancy) and methods of use. Furthermore, they are not provided by the same companies (e.g. IT and telecommunication companies and security consultancies versus business and personnel consultancies), they target different end users and they are provided through different distribution channels. These goods and services are not in competition. Finally, goods or services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). The Opposition Division cannot establish that there is an essential or a significant connection between the opponent’s goods and services and the contested services. Taking all the above into account, the contested services in Class 35 are considered dissimilar to all of the opponent’s goods and services.

Contested services in Class 45

The contested babysitting; information networking relating to professional child minders refer to childcare and assistance related thereto.

The Opposition Division refers to the above description of the opponent’s goods and services and, having carried out a comparison of the goods and services in question, can find nothing in common between the contested services in Class 45 and the opponent’s goods and services in Classes 9, 38, 41, 42 and 45. These goods and services, as described in detail above, have different natures (goods and services are essentially different in nature), purposes (e.g. taking care of children and providing information in this field versus the provision of services of transmitting data, providing education, creating and maintaining software or providing security consultancy) and methods of use. Furthermore, they are not provided by the same companies (e.g. IT and telecommunication companies and security consultancies versus baby-sitting agencies and consultancies), they target different end users and they are provided through different distribution channels. These goods and services are not in competition or complementary (in the sense described above). Taking all the above into account, the contested services in Class 45 are considered dissimilar to all of the opponent’s goods and services.

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.

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, he 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

Cynthia DEN DEKKER

Martin MITURA

Carmen SÁNCHEZ PALOMARES

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.