OPPOSITION Nо B 3 098 371

 

Universal Logística, S.L., Sierra de Guadarrama,78 - Pol. Ind. San Fernando, 28830 San Fernando de Henares, Madrid, Spain (opponent), represented by Arpe Patentes y Marcas, S.L., C/ Alcalá, 26, 28014 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Bunzl Retail & Healthcare Supplies Limited, York House, 45 Seymour Street, W1H 7JT London, United Kingdom (applicant), represented by Wynne-Jones IP Limited, 2nd Floor, 5210 Valiant Court Gloucester Business Park, GL3 4FE Gloucester, United Kingdom (professional representative) and Aipex B.V., Beursplein 37, 3011 Aa Rotterdam, Netherlands (professional representative).

On 27/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 098 371 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

On 15/10/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 17 847 005 (figurative mark). The opposition is based on Spanish trade mark registration No 2 474 011, (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

 

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the invoked, which is the best light in which the opponent’s case can be considered.

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:

 

Class 39: Transport services in general, storage, goods warehousing and distribution.

The contested goods are the following:

 

Class 5: Medical preparations; sanitary preparations for medical purposes; X-ray detectable gauze swabs; swabs for medical use; plasters; dressings; materials for dressings; wipes; disinfectant, antiseptics, sterilising preparations, viricide, bactericide, fungicide, biocide and detergents and wipes, pads, cloths and tissues impregnated with the aforementioned goods; disposable products for hygiene and sanitary purposes; pharmaceutical preparations and substances for use with surgical or other medical procedures; bandages; gauze; cotton and cotton wool for medical use; surgical tissues; wound dressings; adhesive tape for medical use; solutions for rinsing, neutralising and washing human eyes, skin and hair; eye wash; emergency eye washing preparations; pharmaceutical preparations for the treatment of burns; swabs; swabs for medical purposes; sanitary preparations, namely wound cleansing and drainage preparations for medical and surgical purposes; dressings, adhesive dressings, alginate dressings, bandages, medical tape, surgical tape.

Class 9: Protective clothing, footwear, headgear, bodywear and coats, protective disposable coats and overalls of non-woven materials or plastics, all for laboratory use; protective overalls; protective clothing, handwear, gloves, examination gloves, rubber, latex, vinyl, polythene, co-polymer and sterile gloves, gauntlets, oversleeves, fingercots, footwear, overshoes and overboots, all for laboratory use; protective headwear, head coverings, hats, caps, hairnets, all for laboratory use; aprons, briefs and gowns, masks, dust and particle face masks, all for laboratory use; all of the aforesaid goods being for use in connection with protective hygiene in industry and food processing; comparators; dropping pipettes, blood dilution pipettes; magnifiers, microscope slides, cover glasses and slide boxes; graduated tubes; stirring rods; disposable hygiene products and personal disposable hygiene products, namely dust and particle face masks; gauntlets, oversleeves, footwear, overshoes and overboots, headwear, head coverings, hats, caps for protective purposes.

Class 10: Apparatus, instruments and appliances, all for surgical and medical use; diagnostic, examination and monitoring equipment; disposable hygiene products and personal disposable hygiene products, namely examination gloves, fingercots, nurses' headscarves, surgeons' face masks; clothing all for hospital or surgical use; disposable clothing or wear, all for hospital or surgical use; protective clothing, bodywear, coats, overalls, aprons, briefs and gowns, all for hospital or surgical use; handwear, all for hospital or surgical use; gloves, examination gloves, rubber, latex, vinyl, polythene, co-polymer and sterile gloves all for hospital and surgical use, all for medical purposes; fingercots; nurses' headscarves; gauntlets, oversleeves, footwear, overshoes and overboots, headwear, head coverings, hats, caps, hairnets for medical purposes; masks, surgeons' face masks, dust and particle face masks all for medical purposes; disposable containers and bags for medical waste, disposable bags; wristlets, identification bracelets for medical use; mattress covers [incontinence]; holloware for medical purposes; lotion bowls, gallipots, kidney dishes and lids, douche cans, jugs, buckets, sputum mugs, dressing containers, urinals, bedpans, funnels, forceps jars, medicine measures, instrument trays and lids, catheter trays and lids; articles made of porcelain for use in the preparation of medicines; basins, funnels, crucibles, plates and pestle and mortar sets; haemacytometers; haemoglobinometers; apparatus for destroying hypodermic needles; stethoscopes and sphygmomanometers; spatulae, cervical spatulae, applicators, splints, tongue depressors; clinical thermometers, display cabinet thermometers, probe thermometers; dropping pipettes, blood dilution pipettes; dropper bottles; blood lancets; surgical and wound treating equipment; suture and wound closing materials and products, sutures, wound closure; rubber tubing and mouthpieces; counting chambers; comparators for medical purposes; forceps; scissors for surgery; sterile packs containing sterile sheets and gloves for aiding the dressing of wounds; sterile sheets [surgical]; disposable clothing for medical use; physical therapy equipment; physiotherapy and rehabilitation equipment, rehabilitation apparatus for medical purposes; eye baths; parts and fittings for all the aforesaid goods.

Class 16: Disposable paper products, namely tissue, tape; hygienic paper, hygienic hand towels of paper, disposable toilet seat covers made of paper, towels of paper for cleaning purposes, cloth paper, face and body cloths, face and body towels of paper, drying towels of paper, towels of paper, paper wipes, toilet rolls, tissues, bathroom tissue; all of the aforesaid goods being for hygienic purposes in industrial and work environments.

Class 21: Rubber gloves; latex gloves; gauntlets; all for household purposes; holloware; disposable hygiene products and personal disposable hygiene products, namely gloves, examination gloves, rubber, latex, vinyl, polythene, co-polymer and sterile gloves, gauntlets, fingercots, all of the aforementioned being for hygienic purposes in industrial and work environments; disposable gauntlets, oversleeves for hygienic purposes in industrial and work environments.

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 ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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 earlier mark is registered for transport services (in general), which refer, for example, to a fleet of lorries or ships used for moving goods or persons from A to B. Therefore, these services are provided by specialist transport companies whose business is not the manufacture and sale of the goods that are transported. Also, the earlier mark covers packaging and storage of goods warehousing and distribution which refer to services offered to thirds whereby a company’s merchandise is packed and kept in a particular place for a fee. For example, storing goods for thirds means putting them in a warehouse, i.e. an installation specially designed for keeping goods in good condition so that they can be released later when the need arises. These services are provided by specialist companies, whose business it is to pack and/or store goods for thirds but not to manufacture or sell such goods.

As regards all the contested goods in Classes 5, 9, 10, 16 and 21, they are medical and sanitary preparations and products, apparatus, instruments and appliances, all for surgical and medical use, disposable products, gloves gauntlets, oversleeves for hygienic purposes in industrial and work environments.

The conflicting goods and services have nothing in common as they differ in their natures (the contested ones are tangible while the opponent’s are not), purposes (the contested goods are intended to be used in a medical or industrial environment, whereas the services in question are aimed at third parties who wish to have purchase transport services or to have their products packed and stored), as well as distribution channels and providers. Furthermore, they are not complementary to each other, contrary to what the opponent alleges.

In its observations, the opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The opponent refers to the cases:

 Decision of 31/01/2006, B 683 708, VISA and E-VISA vs , in which the Opposition Division concluded that the applicant’s services transport, storage and distribution of electronic parts and apparatus, computers and computer accessories in Class 39 also have a complementary character with the opponent’s electronic apparatus and data processing equipment and computers. In this case, the abovementioned services cannot be as being rendered by a specialised transport company. It is reasonable to consider that the end consumers or business customers might assume that the manufacturer and retailer of the specific electronic apparatus, computers accessories also renders, on its own or by and economically-linked company he transport, storage and/or distribution of these goods. Therefore, taking into account that they have some points of contact, it was accepted a remote similarity between them.

 Decision of 12/07/2012, R 1902/20011, Energan vs ENERCAN, in which storage, warehousing and distribution of pet food are also similar to the goods of the opponent’s mark in Class 31 pet food.

These cases are not comparable to the present case, since the abovementioned services refer to the transport of the contested goods and in the present case are general services. Furthermore, even if the contested goods in Classes 5, 9, 10, 16 and 21 could be the object of the services of ‘packaging, storage and distribution’ covered by the earlier mark, such circumstance is not sufficient for them to be considered complementary. Indeed, even if the manufacture and sale of the goods may also involve their packaging and storage or their distribution, such activities are performed by the manufacturer of the goods in its own interest (22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298; and 07/02/2006, T-202/03, Comp USA, EU:T:2006:44, § 46 and 47). As a consequence, the goods and services at issue do not coincide in public either and by definition, goods and services intended for different publics cannot be complementary as confirmed by settled case-law (22 January 2009, T-316/07, ‘easyhotel’, § 57 and 58; and of 22 June 2011, T-76/09, ‘Farma Mundi Farmaceúticos Mundi’, § 30). Finally, the goods and services compared are not in competition with each other since they are neither interchangeable nor substitutable for one another.

The fact that the goods and services at issue might ultimately coincide in the sense that the consumer of the contested goods may at some point also look for a company’s services in Class 39 to transport package and store these goods is not conclusive either. Any good can be transported, packaged and stored but the services in Class 39 merely refer to the services whereby a company’s or any other person’s goods are transported, packed and kept in a particular place for a fee. Therefore, the contested goods are dissimilar to the services of covered by the earlier mark although they are goods that may be transported, packed or stored (07/02/2006, T-202/03, Comp USA, EU:T:2006:44; 22/06/2011, T-76/09, Farma Mundi Farmaceúticos Mundi, EU:T:2011:298, § 32) and the opponent’s arguments are dismissed and unfounded.

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, 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

 

 

Rosario GURRIERI

María Clara IBÁÑEZ FIORILLO

Francesca DRAGOSTIN

 

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.