OPPOSITION No B 3 051 037

Casavi, Asistencia en Viaje S.L., Avda. de Burgos, 109, 28050 Madrid, Spain (opponent), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative)

a g a i n s t

Casavi GmbH, Poccistraße 15, 80336 München, Germany (applicant), represented by Lubberger Lehment - Kanzlei Für Gewerblichen Rechtsschutz, Meinekestr. 4, 10719 Berlin, Germany (professional representative).

On 30/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 037 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 and services of European Union trade mark application No 17 632 621 ‘CASAVI’, namely in Classes 9, 35, 36, 38 and 42. The opposition is based on Spanish trade mark registration No 3 533 454 . 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 and services

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

Class 37: Roadside vehicle breakdown repair services; vehicle breakdown repair services; vehicle maintenance and repair.

Class 39: Arranging vehicle breakdown recovery; ambulance transport, taxi transport; reservation and issuing of airline and train tickets; repatriation services for patients; cranage services.

Class 45: Legal services.

The contested goods and services are the following:

Class 9: Computer software for document management; computer software for database management; computer programmes for data processing; computer software for creating dynamic websites; computer software for creating searchable databases of information and data; databases (electronic); data processing systems; software for online messaging.

Class 35: Updating and maintenance of data in computer databases; provision of an on-line marketplace for buyers and sellers of goods and services; computerized file management; computerized file management; computerized market research services; computerized file management; provision of space on web-sites for advertising goods and services; advertising by transmission of on-line publicity for third parties through electronic communications networks; on-line advertising on a computer network.

Class 36: Real estate selection and acquisition [on behalf of others]; advisory services relating to real estate valuations; consultancy in the purchasing of real estate; computerised information services relating to real estate; estate management; estate agency services for sale and rental of buildings; real estate brokerage; provision of information relating to property [real estate]; administration of financial affairs relating to real estate; real estate investment and leasing; letting and rental of permanent accommodation; rental of offices [real estate]; provision of housing accommodation; real estate and property management services; property portfolio management; real estate services; real-estate valuations; real-estate valuations; real estate agency; providing of information with regard to the location and purchase and rental price of real estate; financial analysis; compiling of real estate reports; consultancy and information in relation to the aforesaid services, included in this class; research in connection with purchasing real estate (real estate affairs) with regard to the location and purchase and rental price of real estate.

Class 38: Providing on-line chat rooms for social networking; providing access to electronic communications networks and electronic databases; providing internet chatrooms; providing on-line electronic bulletin boards for transmission of messages among computer users; provision of on-line forums; electronic data interchange services; online messaging services; transmission of information by electronic communications networks.

Class 42: Computer software design and updating; computer software consultancy; software design and development; design, maintenance, rental and updating of computer software; software customisation 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 opponent’s services are mainly vehicle maintenance and repair (Class 37), transport and related activities (Class 39) and legal services (Class 45).

The contested goods in this class are computer software and electronic databases.

These contested goods have nothing in common with the opponent’s services as described above. By their nature, services are generally dissimilar to goods. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, that is to say, movables or real estate. Services, however, consist of the provision of intangible activities. These goods and services have a different nature, intended purpose and methods of use. Their producers and providers, distribution channels and relevant public are also different. Furthermore, these goods and services are neither complementary nor in competition. Consequently, they are dissimilar.

Contested services in Class 35

The contested services in this class are related to the areas of business assistance and administrative chores, commercial trading and information to consumers, business analysis and advertising.

These contested services have nothing in common with the opponent’s services as described above. They have a different nature, intended purpose and methods of use. Their providers, distribution channels and relevant public are also different. Furthermore, these services are neither complementary nor in competition. Consequently, they are dissimilar.

Contested services in Class 36

The contested services in this class are mainly real estate and financial analysis.

These contested services have nothing in common with the opponent’s services as described above. They have a different nature, intended purpose and methods of use. Their providers, distribution channels and relevant public are also different. Furthermore, these services are neither complementary nor in competition. Consequently, they are dissimilar.

Contested services in Class 38

The contested services in this class are in relation to the provision of telecommunications.

These contested services have nothing in common with the opponent’s services as described above. They have a different nature, intended purpose and methods of use. Their providers, distribution channels and relevant public are also different. Furthermore, these services are neither complementary nor in competition. Consequently, they are dissimilar.

Contested services in Class 42

The contested services in this class consist of software design and development.

These contested services have nothing in common with the opponent’s services as described above. They have a different nature, intended purpose and methods of use. Their providers, distribution channels and relevant public are also different. Furthermore, these services are neither complementary nor in competition. Consequently, they are dissimilar.

The opponent argued that the contested computer software in Class 9 and the contested services related to computers in Classes 38 and 42 are connected to the opponent’s vehicle maintenance and repair services because maintenance and repair services include comprehensive services that range from routine servicing to complete computer diagnostics and because nowadays, vehicles are so sophisticated that they use on-board computers.

However, this alleged connection is not enough to justify a finding of similarity, because nowadays there are many goods that incorporate computer software and many services provided using computers. The relevant public will not think that the contested goods originate from the same undertaking as the opponent’s services just because they include or use software and computers.

The opponent further argued that the contested goods and services are complementary to its legal services, because they include services such as software licensing or legal research, and because most business companies have legal departments. Therefore, they can have the same producer/provider and can target the same consumers.

The contested goods and services are not complementary to legal services, because complementarity only happens when there is a close connection between goods or/and services, 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). In the present case, the contested goods and services and the opponent’s legal services are provided by totally different entities and target a totally different public.

The opponent finally argued that the contested services in Class 36 overlap with its legal services, because real estate companies normally have legal, financial, tax and other specialists providing clients with a comprehensive financial and legal service. The contested services in Class 36 can thus have the same final purpose and can be provided by the same professionals, through the same trade channels and can target the same public as the opponent’s legal services.

However, this alleged overlap is not enough to justify a finding of similarity, because legal services can be provided in many areas of commerce. The relevant public will not think that the contested real estate services originate from the same undertaking as the opponent’s legal services just because legal professionals provide advice on a particular real estate issue.

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 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

Claudia ATTINÀ

Loreto URRACA LUQUE

Birute SATAITE-GONZALEZ

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.