OPPOSITION No B 2 648 403

Pilot Air Freight Corporation, N Middletown Road 314, Lima, PA, 19037, United States of America (opponent), represented by Marks & Clerk LLP, Atholl Exchange 6 Canning Street, Edinburgh, Scotland EH3 8EG, United Kingdom (professional representative)

a g a i n s t

KPMG LLP, 15 Canada Square, London E14 5GL, United Kingdom (applicant), represented by Simkins LLP, Lynton House 7-12 Tavistock Square, London WC1H 9LT, United Kingdom (professional representative).

On 02/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 648 403 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 650 212, namely against all the goods and services in Classes 9, 16, 36, 41 and 42, and some of the services in Class 35. The opposition is based on European Union trade mark registrations No 9 308 685 and No 9 309 071. The opponent invoked Article 8(1)(b) EUTMR.

EUTM No 9 308 685 EUTM No 9 309 071
Earlier trade marks	Contested sign

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 must 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 will be rejected.

The applicant requested that the opponent submit proof of use of the EU trade marks on which the opposition is based.

In the present case, the contested trade mark was published on 02/11/2015.

The two earlier EU trade marks were registered on 03/02/2011. Therefore, the request for proof of use is inadmissible.

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

In relation to both earlier marks, the services on which the opposition is based are the following:

Class 36: Customs brokerage services.

After limitation, the contested goods and services are the following:

Class 9: Computer programs; computer software; interactive computer software; software applications; computer e-commerce software; computer e-commerce software applications; business management software; business management software applications; online publications; articles, columns and written/published articles contained and/or supplied in or by electronic media; downloadable electronic publications; publications in electronically, magnetically or optically recorded and recordable forms; podcasts; webcasts; none of the aforesaid goods including or relating to customs brokerage services.

Class 16: Printed matter; reports; publications; instructional and teaching material (not including apparatus); directories; none of the aforesaid goods including or relating to customs brokerage services.

Class 35: Business consulting, advice and information relating to electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; outsourcing services [business assistance]; analysis of workforces; analysis of workforce performance; business management planning and development, business risk management; business advice on business ventures and business acquisitions, starting of companies and internal company investigations; business investigations and business advice on insolvent companies; market studies; auditing services; investor auditing services; data analytics relating to commercial affairs, business, electronic commerce and enterprise resource planning; data analysis services relating to commercial affairs, business, electronic commerce and enterprise resource planning; data modelling services relating to commercial affairs, business, electronic commerce and enterprise resource planning; data collection, compilation and systemisation services; compilation of computer data-bases; data management services; the aforesaid services also being provided online via global computer networks and/or the Internet; none of the aforesaid services including or relating to customs brokerage services.

Class 36: Pension services; provision of pension information; pension advisory services; pension planning services; money saving advice; financial analysis; financial research and information services; investment analysis; advice on creditor and debtor control investments, grants and financing of loans; tax reporting services (not accounting); corporate finance services including advising on financial affairs, financial evaluation and financial consultancy; advisory services relating to credit and debt control; financial investigation; business appraisals for financial valuation; financial risk assessments; analysis of financial information; supply of online information relating to financial affairs; investment services; financial investment services; investment management services; investment, grants and financing of loans; investment asset management; arranging investments, in particular capital investments, financing services and insurance; advisory services related all the aforesaid services; the aforesaid services also being provided online via global computer networks and/or the Internet; none of the aforesaid services including or relating to customs brokerage services.

Class 41: Provision of training and courses relating to management of commercial and financial affairs; organising conferences, seminars, symposia and meetings relating to commercial, financial and management affairs; publishing of books, reports, magazines and other printed matter; translation of deeds, legal instruments and legal documents; none of the aforesaid services including or relating to customs brokerage services.

Class 42: Software design, development and implementation services; computer software design; computer software design and programming services; development of computer software solutions; development of computer software application solutions; constructing internet platforms for electronic commerce; cloud computing services; technical consultancy in relation to the aforementioned services; computer software technical support services; hosting of digital content, namely, on-line journals and blogs; consultancy in the field of information technology, computers; technical consultancy in the fields of digital and mobile technologies, electronic commerce and electronic enterprise resource planning; none of the aforesaid services including or relating to customs brokerage services.

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

The terms ‘in particular’ and ‘including’, used in the applicant’s list of services in Class 36, indicate that the specific services are only examples of items included in the categories and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of services in Classes 35 and 42 to show the relationship of individual services with broader categories, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.

Before proceeding to the comparison, it is useful to describe the opponent’s services. Customs brokerage services, being classified in Class 36, concern the financial aspect of the clearing of goods through customs barriers for importers and exporters. These services are provided by (licenced) customs brokers, who must comply with certain requirements before the local customs and who have specific professional knowledge and expertise in relation to customs law, tariffs, import and export regulations, customs classification, trade documentation etc. Customs brokers act as professional agents for an importer or exporter and are paid customs-brokerage fee. These services consist of the preparation of financial documents and/or electronic submissions, the calculation and payment of taxes, duties and excises. They are in principle directed at other businesses, such as freight forwarders, shipping lines, trade authorities and other customs brokerage firms.

Contested goods in Class 9

The contested goods in this class are a range of computer programs, software, and electronic publications, excluding goods that concern customs brokerage. Computer programs and software are created and marketed by IT companies; they are usually offered in specialised sales channels or along with computer hardware, peripherals and accessories. Electronic publications, depending on their subject matter, are devised and offered by creative content generators such as writers and editors, or specialists, copywriters in a given field who prepare technical texts, presentations, tutorials, compile data into systematised databases etc.

Nowadays, it is common practice to use computer software or electronic publications when rendering many different services, including those concerning customs clearance. Nevertheless, that does not lead to the automatic conclusion that computer programs/software or electronic publications are similar to services that use them to function more efficiently.

The differences in the natures and purposes of these goods and services are vast. The same applies also to their usual origins and distribution channels. Furthermore, they are neither complementary nor in competition. The mere fact that the goods and services in question can be directed at the same public is insufficient in itself to support a finding of similarity. Therefore, all of the contested goods in Class 9 are dissimilar to the opponent’s services in Class 36.

Contested goods in Class 16

The contested goods in this class are printed matter and training material, excluding goods that concern customs brokerage. These goods are created by fiction or non-fiction authors, they are printed by typographies and they are distributed through commercial channels dealing with printed publications, books and periodicals, training and school supplies etc.

Analogous considerations apply to these goods as to those given above in relation to Class 9. The contested goods have no relevant commonalities with the opponent’s services. The mere fact that the contested printed matter, or training material, can have customs brokerage as their subject matter is not a relevant factor. The differences in the natures and purposes of these goods and services are vast. The same applies also to their usual origins and distribution channels. Furthermore, they are neither complementary or in competition. The mere fact that the goods and services in question can be directed at the same public is insufficient in itself to support a finding of similarity. Therefore, all of the contested goods in Class 16 are dissimilar to the opponent’s services in Class 36.

Contested services in Class 35

The contested services in this class are aimed at supporting or helping other businesses to do or improve their business, excluding services that concern customs brokerage. They are in principle directed at the professional public. These services are mainly provided by business management consultants, human resources consultants, chartered accountants, licenced auditors, market researchers and data analysts. Business consulting includes the provision of commercial or management information, analysis and modelling of data related thereto, facilitating business contacts, finding outsourced service providers, studying consumer trends etc. Business auditing involves the evaluation of a variety of business activities; it encompasses a review of organisational structures, management, processes etc. Data management services are essentially clerical operations entailing the collection, compilation and systematisation of data into computer databases.

Admittedly, there is a certain connection between the contested services in this class and the opponent’s customs brokerage services in Class 36, insofar as they can be seen as services to support other businesses. However, it has to be borne in mind that the opponent’s services are limited to very specific activities which are clearly distinct, in nature and purpose, from the contested services as detailed above. This distinction also comports with the reality of the marketplace where business management consulting, auditing or clerical functions are provided by agencies that do not normally provide customs brokerage. They operate in different fields of business. The mere fact that they can be directed at the same public is not sufficient in itself to lead to a finding of similarity. Furthermore, they are neither complementary nor in competition. Therefore, all of the contested services in Class 35 are dissimilar to the opponent’s services in Class 36.

Contested services in Class 36

The contested services in this class are specific types of financial services, such as those dealing with pensions, savings, loans, investments, assets, grants, corporate finance, and credit/debit control, none of which include, or relate to, customs brokerage. They are commonly provided by banks, savings institutions, investment funds and other operators in the finance industry. In addition, the contested services encompass a range of information, research, analysis, evaluation and consultancy services, all rendered in direct connection with financial/monetary affairs.

Although it is true that the opponent’s customs brokerage services involve monetary transactions such as the sending/receiving of money for tax and duty payments, the contested list of services, after the applicant’s limitation, does not contain financial services in general.

The contested services at stake have no relevant commonalities with the opponent’s services. The distinction is emphasised by the fact that customs brokers do not provide pension schemes, money saving instruments, investment, loans, creditor or debtor control, business appraisals etc. Even if the activities of a customs broker may require external funding that does not automatically mean that they are complementary to the contested services. Rather, customs brokers would use the services of a financial institution as ancillary services for financing its operations or transferring the payments on behalf of its customers.

Therefore, the services at issue have clearly different natures and purposes, as explained above. They are not provided by the same undertakings and they do not coincide in the distribution channels. The mere fact that the services in question can be directed at the same public is insufficient in itself to support a finding of similarity. Furthermore, they are neither complementary nor in competition. Therefore, all of the contested services in Class 36 are dissimilar to the opponent’s services in Class 36.

The opponent refers to a previous decision of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous decision referred to by the opponent, namely decision of 03/04/2014, R 1040/2013-1 - ‘Union Bank of India’ (Fig.) / ‘Union Investment’ (Fig.) et al., where customs brokerage services were found as falling in the broad category of financial affairs, is not relevant to the present proceedings. As set out above, after limitation, the contested list of services does not cover the broad category of financial services, thus the situations are not comparable. Therefore, the opponent’s argument in that regard must be set aside.

Contested services in Class 41

The contested services in this class are aimed at providing training, organising events, publishing and translation in the field of business management or financial affairs, but excluding services that concern customs brokerage. Training is usually provided by licenced professionals employed by educational institutions, such as colleges and academies. Event organisation is handled by specialised agencies that arrange and conduct smaller or bigger events for educational purposes, including the devising of the program and support materials, inviting speakers, dealing with attendants etc. Publishing services are offered by publishing houses which handle the editorial work and commercialise the publications. Translation services are performed by professional linguists who are often certified.

There is a vast distinction in the natures and purposes of those services vis-à-vis the opponent’s customs brokerage services in Class 36. They do not originate from the same undertakings and are not offered on the same commercial channels. Furthermore, they are neither complementary nor in competition. The mere fact that these services can be of interest to the same public is not sufficient in itself for a finding of similarity. Therefore, all of the contested services in Class 41 are dissimilar to the opponent’s services in Class 36.

Contested services in Class 42

The contested services in this class are information technology (IT) services, excluding services that concern customs brokerage. Their purpose is to provide electronic, computer-based tools that can improve one’s daily life or business operation. Such services are provided by software developers, IT consultants, and companies specialising in hosting digital content for others.

The contested services have no relevant commonalities with the opponent’s customs brokerage services in Class 36. The mere fact that these services can be of interest to the same public is not sufficient for a finding of similarity. Clearly different by natures and purposes, they originate from different undertakings and move over distinct distribution channels. Furthermore, they are neither complementary nor in competition. Therefore, all of the contested services in Class 42 are dissimilar to the opponent’s services in Class 36.

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, 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

Michele M. BENEDETTI ALOISI

Solveiga BIEZA

Julie GOUTARD

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