OPPOSITION No B 3 046 849

Boatmanager Holding AB, Östra Hamngatan 41, 41110 Göteborg, Sweden (opponent), represented by Otmore Limited, Dragonara Business Centre, 5^th Floor, Dragonara Road, STJ 3141 St Julian’s, Malta (professional representative)

a g a i n s t

lacani, 39 rue Charles Perrault, Artigues-près-Bordeaux, France (applicant).

On 18/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 849 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 380 502 ‘myboatmanager’. The opposition is based on European Union trade mark registrations No 14 798 961 ‘Boatmanager’, No 14 799 274 and No 14 799 225 . 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.

a) The goods and services

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

European Union trade mark registration No 14 798 961

Class 35: Retail services in relation to vehicles; auctioning of vehicles; wholesale services in relation to vehicles; retail services in relation to computer hardware; retail services in relation to metal hardware; retail services in relation to heaters; retail services in relation to navigation devices.

Class 37: Yacht and boat conversion, renovation, refit and repair; maintenance and repair of parts and fittings for boats; surface conditioning of boats.

Class 42: Vessel salvage services; reservation services for transportation by boat; organization of travel and boat trips.

European Union trade mark registration No 14 799 274

Class 35: Retail services in relation to vehicles; auctioning of vehicles; wholesale services in relation to vehicles; retail services in relation to computer hardware; retail services in relation to metal hardware; retail services in relation to heaters; retail services in relation to navigation devices.

Class 37: Yacht and boat conversion, renovation, refit and repair; maintenance and repair of parts and fittings for boats; surface conditioning of boats.

Class 42: Chartering of watercraft, yachts, ships, boats and water vehicles; vessel salvage services; storage of watercraft, yachts, boats and water vehicles; rental of moorings for boats; harboring services for ships and boats; boat transport; reservation services for transportation by boat; boat rental; organization of travel and boat trips.

European Union trade mark registration No 14 799 225

Class 35: Retail services in relation to vehicles; auctioning of vehicles; wholesale services in relation to vehicles; retail services in relation to computer hardware; retail services in relation to metal hardware; retail services in relation to heaters; retail services in relation to navigation devices.

Class 37: Yacht and boat conversion, renovation, refit and repair; maintenance and repair of parts and fittings for boats; surface conditioning of boats.

Class 42: Vessel salvage services; reservation services for transportation by boat; organization of travel and boat trips.

The contested goods and services are the following:

Class 9: Software.

Class 35: Advertising, marketing and promotional services.

Class 42: Design services.

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 goods in Class 9

The contested software is dissimilar to all the opponent’s services in Classes 35, 37 and 42 of the earlier marks, contrary to the opponent’s arguments. Software is a tool composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation and has nothing relevant in common with the opponent’s services, namely those in Class 35 (various specific retail services), Class 37 (services rendered by a person or organizations engaged in the restoration or preservation of boats) and Class 42 (various specific services for the booking, organization of boat trip, salvage services in the sea and storage and harbouring services). All these opponent’s services clearly differ in their nature and purposes from the contested goods. The producers of the contested goods are not normally involved in the provision of any of the opponent’s services. It follows that these goods and services are manufactured or provided by different undertakings. In addition, the targeted public is different. Furthermore, the goods and services under comparison have different methods of use and are neither in competition nor complementary. Therefore, they are dissimilar.

Contested services in Class 35

The contested advertising, marketing and promotional services consist of providing others with assistance and strategy for the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity, strategy and promotional activities. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

The opponent claimed that their retail services in relation to various goods involved advertising, marketing and promoting the goods for others and, therefore, there was similarity between the opponent’s goods in Class 35 and the contested services.

The Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C‑418/02, Praktiker, EU:C:2005:425, § 34).

However, as advertising one’s own goods is not a service provided for others, such as running an advertisement agency designing advertisement campaigns for third parties, the contested advertising, marketing and promotional services are fundamentally different in nature and purpose from the opponent’s services in Class 35 (various specific retail services). The same applies in relation to the opponent’s services in Class 37 (services rendered by a person or organizations engaged in the restoration or preservation of boats) and Class 42 (various specific services for the booking, organization of boat trip, salvage services in the sea and storage and harbouring services). The fact that some of the services may appear in advertisements is insufficient for a finding of similarity between them. Consequently, the contested services differ in nature, purpose, commercial origin, relevant consumers and distribution channels from the opponent’s services in Classes 35, 37 and 42. Moreover, they are neither in competition nor complementary. Therefore, they are dissimilar.

Contested services in Class 42

The contested design services are related to scientific and technological services including the design and development of computer hardware and software and has nothing relevant in common with the opponent’s services in Class 35 (various specific retail services), Class 37 (services rendered by a person or organizations engaged in the restoration or preservation of boats) and Class 42 (various specific services for the booking, organization of boat trip, salvage services in the sea and storage and harbouring services). Contrary to the opponent’s arguments, the contested services and the opponent’s services clearly differ in their purposes and do not share the same nature. The providers of the contested services are not normally involved in the provision of any of the opponent’s services. It follows that these services are provided by different undertakings. In addition, the targeted public is different. Moreover, they are neither in competition nor complementary. Therefore, they are dissimilar.

b) 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 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Rasa BARAKAUSKIENE

Erkki MUNTER

Ferenc GAZDA

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.