OPPOSITION No B 3 048 737

Grain Limited, 12 Melcombe Place, NW1 6JJ Londo, United Kingdom (opponent), represented by Nucleus Ip Limited, 10 St. Bride Street, EC4A 4AD London, United Kingdom (professional representative)

a g a i n s t

Grain London Limited, 2 Chance Street, E1 6JT London, United Kingdom (applicant), represented by Gallafents Ltd., 1 Sans Walk, EC1R 0LT London, United Kingdom (professional representative).

On 05/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 737 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 603 317 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 603 317 ‘GRAIN’. The opposition is based on United Kingdom trade mark registration No 2591617 ‘GRAIN’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

On 19/02/2019 the opponent limited the basis of opposition, by withdrawing the originally claimed Articles 8(4) and 8(5) EUTMR.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(a) and (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 services on which the opposition is based are the following:

Class 35: Advertising and promotional services; marketing and consultancy services relating to the communication of marketing messages for the sale of goods and sale of goods services provided by third parties; information in relation to the sale of goods; information, advisory and consultancy services, all relating to the sale of goods and the sale of goods services provided by third parties; advertising; marketing and promotional services; preparation, dissemination and updating of advertising material; business advisory and consultancy services; organisation of showrooms for commercial or advertising purposes; arranging and conducting promotional and marketing events; consultation and advisory services relating to management and business; market research services; business name, company name and brand creation services; updating of advertising material; organisation of promotional events and promotional launches; business research; market research; consultancy relating to public relations and events (for commercial or advertising purposes); strategic business development and management consultancy; marketing and promotional services; preparation and presentation of audio-visual displays for advertising purposes; sales advisory services; preparation, dissemination and updating of advertising material for use as web pages on the Internet or other medium; business advisory and consultancy services; organisation of showrooms for commercial or advertising purposes; arranging and conducting promotional and marketing events; market research services; search engine optimization.

Class 42: Design services including information, consultancy and advisory services relating to design; interior and environment design services; trade mark creation; brand design services; design of advertising logos and materials; corporate identity design services; corporate image design services; corporate logo design services; graphic design services, including computer aided design of video graphics; packaging design; design of brochures; artwork design; design of products; textile design; commercial design services including those relating to printing; design of promotional material; design of advertising matter; design of brochures; design of livery for corporate identity; design of printed material, matter for use in marketing, illustration promotional matter, publicity material, signs, stationery, books, window graphics; computer programming; design and development of software applications; bespoke application development; graphic user interface design services, wireframe design services; design of Greetings Cards; design of Wrapping Paper; computer system design and analysis; creating web sites for others; industrial design; information, advice and consultancy relating to all the aforesaid.

The contested goods and services are, after limitation requested by the applicant on 31/12/2018, the following:

Class 9: Virtual reality software; computer software for interactive visual display; digital data relating to visualisation; audio-visual presentations (recordings); multimedia recordings; computer-aided design presentations (recordings) for visualising buildings, townscapes, landscapes and building interiors.

Class 16: Architectural models; artwork.

Class 35: Preparation and updating advertising material; preparation and presentation of audio-visual displays for advertising purposes; preparation and updating advertising material for use as web pages; consultation and advisory services relating to advertising material and virtual reality displays and simulations; all for others and all being related to building developments, townscapes, landscapes, engineering projects or construction projects.

Class 41: Audio-visual presentations; production of audio-visual or video simulations for buildings, townscapes and landscapes.

Class 42: Design services relating to models; design services relating to model-making for display purposes; design and development services in relation to virtual reality.

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 ‘including’, used in the opponent’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 (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.

It is noted that the goods and services are compared, according to the abovementioned criteria, as applied for, disregarding the hypothetically dissimilar fields of business activities or customers as claimed by the applicant.

Contested goods in Class 9

The contested Virtual reality software; computer software for interactive visual display are similar to computer programming; design and development of software applications as they usually coincide in producer and relevant public. Furthermore they are complementary.

The opponent’s design services including information, consultancy and advisory services relating to design; interior and environment design services; graphic design services, including computer aided design of video graphics; industrial design encompass different types of design activities. By way of example, they can be related to the design of computer systems, brand and logotype design, industrial and automotive design, as well as architectural design for interior/exterior decoration, town planning, design of office space, manufacturing facilities or commercial premises. Architectural designers, who can be the providers of the foregoing services, usually present their ideas and work for the design of a building or urban landscape in the form of graphic model. Nowadays, such models are commonly produced and presented in an electronic format. They range from simple three-dimensional visualisations to audio-visual presentations featuring computer aided-design. Thus, there is a close connection between the opponent’s services and the contested digital data relating to visualisation; audio-visual presentations (recordings); multimedia recordings; computer-aided design presentations (recordings) for visualising buildings, townscapes, landscapes and building interiors. Although the natures, purposes and methods of use of these goods and services do differ, they are provided by the same undertakings, are directed at the same public, and are offered through the same distribution channels. Therefore, they are similar to a low degree.

Contested goods in Class 16

The contested Architectural models; artwork are similar to a low degree to the opponent’s artwork design; design of products as they usually coincide in producer and relevant public.

Contested services in Class 35

The contested Preparation and updating advertising material; preparation and presentation of audio-visual displays for advertising purposes; preparation and updating advertising material for use as web pages; consultation and advisory services relating to advertising material and virtual reality displays and simulations; all for others and all being related to building developments, townscapes, landscapes, engineering projects or construction projects are identical to the opponent’s preparation, dissemination and updating of advertising material; advertising; marketing and promotional services, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services contrary to the arguments of the opponent.

Contested services in Class 41

The contested Audio-visual presentations; production of audio-visual or video simulations for buildings, townscapes and landscapes are at least similar to the opponent’s preparation and presentation of audio-visual displays for advertising purposes in Class 35. The services usually coincide in producer, relevant public and distribution channels and may be complementary.

Contested services in Class 42

The contested Design services relating to models; design services relating to model-making for display purposes; design and development services in relation to virtual reality are included in the broad categories of, or overlap with, the opponent’s Design services including information, consultancy and advisory services relating to design; design and development of software applications respectively. Therefore, they are identical.

2. The signs

GRAIN	GRAIN
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods and services, as established above in section a) of this decision are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these services. Furthermore, the remaining contested goods and services were found to be similar to varying degrees to those covered by the earlier trade mark.

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).

Therefore, given the identity of the signs, and taking into account the interdependence principle there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR, and the opposition must also be upheld for these goods and services.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Rosario GURRIERI

Erkki Münter

Christophe DU JARDIN

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.