OPPOSITION No B 2 927 377

Laboratorios ERN S.A., C. Perú, 228, 08020 Barcelona, Spain (opponent), represented by Ponti & Partners S.L.P, C. Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Dexter Mould Technology B.V., Innovatieweg 9, 7007 CD Doetinchem, Netherlands (applicant), represented by Octrooibureau Griebling BV, Sportweg 10, 5037 AC Tilburg, Netherlands (professional representative).

On 16/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 927 377 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 16 465 809 for the figurative mark . The opposition is based on Spanish trade mark registration No 70 127 for the word mark ‘RYM’. The opponent invoked Article 8(1)(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

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

Class 1: Chemical preparations.

Class 5: Biological and pharmaceutical preparations.

The contested goods are the following:

Class 6: Moulds for manufacturing plastic products by means of a thermoforming process, in particular cups and bowls.

Class 7: Machines for manufacturing plastic products by means of a thermoforming process, in particular cups and bowls.

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

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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.

The contested goods in Classes 6 and 7 are either moulds or machines for manufacturing plastic products, which are dissimilar to all the goods (chemical, biological and pharmaceutical preparations) for which the earlier mark is registered in Classes 1 and 5, since they do not have any relevant points of contact that could justify finding a level of similarity between them. Contrary to the claims of the opponent, the goods in question are neither complementary, nor indispensable nor otherwise sufficiently related to each other.

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). By definition, goods intended for different publics cannot be complementary (22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30; 12/07/2012, T-361/11, Dolphin, EU:T:2012:377, § 48).

The fact that the contested goods might be destined for pharmaceutical products, as claimed by the opponent, e.g. to produce its packaging, is therefore not sufficient to render them similar. The contested goods might be considered ancillary, and as such supporting or supplementing the goods of the opponent, but this does not render them complementary. The goods in question significantly differ in their nature, purpose, relevant public and distribution channels. In addition they are neither in competition nor, as mentioned above, complementary to each other.

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 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 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Begoña URIARTE VALIENTE

Holger Peter KUNZ

Katarzyna ZANIECKA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.