OPPOSITION No B 3 055 020

La Flor Burgalesa S.L., Pol. Ind. Villalonquejar Lopez Bravo 37, 09001 Burgos, Spain (opponent), represented by Pons Patentes Y Marcas Internacional S.L., Glorieta de Rubén Darío 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Brulie B.V., Carnegieplein 5, 2517 KJ 's-Gravenhage, Netherlands (applicant), represented by V.O., Carnegieplein 5, 2517 KJ The Hague, Netherlands (professional representative).

On 26/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 020 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 17 782 509 for the word mark ‘BOREO’. The opposition is based on European Union trade mark registration No 12 679 651 and Spanish trade mark registration No 3 083 651, both for the figurative marks . 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

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

Class 30: Cake dough (repeated twice); viennoiserie.

Following a limitation filed by the applicant on 28/01/2019, the contested goods and services are the following:

Class 30: Coffee, tea, cocoa and artificial coffee.

Class 32: Mineral and aerated waters and other non-alcoholic beverages and fruit juices; syrups and other preparations for making beverages.

Class 35: Advertising and business matters; procurement services for others (purchasing goods and services for other businesses) relating to the (online) purchase and sale of beverages and preparations for making beverages; arranging of commercial transactions, for others, via online shops.

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 30 and 32

The contested goods are dissimilar from the opponent’s ones. Specifically, they have a different nature and purpose and do not normally share the same distribution channels nor are usually found in the same sections or shelves in supermarkets or grocery shops. Furthermore, these goods are generally not produced by the same undertakings. On a final basis, they are not complementary or in competition.

Contested services in Class 35

The contested services do not have anything in common with any of the opponent’s goods. In particular, they have clearly different natures, purposes, methods of use, distribution channels, relevant publics and producers/providers. In addition, they are not complementary or in competition. 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.

The Opposition Division

Sandra IBAÑEZ

Aldo BLASI

Andrea VALISA

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.