OPPOSITION Nо B 3 078 172

 

Dopat S.A., València Parc Tecnologic, C/ Charles Robert Darwin, 34-36, 46980 Paterna (Valencia), Spain (opponent), represented by Elisa Peris Despacho Profesional, S.L., C/ Profesor Beltran Baguena, Nº 4, Of. 116 (Edificio Trade Center), 46009 Valencia, Spain (professional representative) 

 

a g a i n s t

 

Qiu Jianyu, Sudiyi Shangdongwanyaju, No. 104 Shashen Rd., Yantian Dist., Shenzhen City, Guangdong, People’s Republic of China (applicant), represented by Novagraaf France, Bàtiment O2-2, rue Sarah Bernhardt CS 90017, 92665 Asnières-sur-Seine, France (professional representative).

On 29/06/2021, the Opposition Division takes the following

 

 

DECISION:

1. Opposition No B 3 078 172 is rejected in its entirety.

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

 

REASONS

 

On 13/03/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 17 936 607 ‘Coolwee’ (word mark). At the moment of filing the notice of opposition, they were goods in Classes 9, 18 and 25, but following the restriction of the contested application requested on 05/12/2019, the opponent maintained the opposition against all the remaining goods, namely goods in Class 9. The opposition is based on European Union trade mark registration No 9 010 323, (figurative mark); European Union trade mark registration No 3 268 836, ‘COOL WAY’ (word mark); European Union trade mark registration No 16 253 601, (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

 

 

PROOF OF USE

 

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

 

The same provision states that, in the absence of such proof, the opposition will be rejected.

 

The applicant requested that the opponent submit proof of use of the earlier marks on which the opposition is based (as listed in Reasons above).

In relation to earlier European Union trade mark registration No 16 253 601, the request for proof of use cannot be taken into account because it concerns a mark that, at the date of filing of the contested trade mark, had not been registered for at least five years.

However, in relation to earlier European Union trade mark registrations No 9 010 323 and No 3 268 836, the request was filed in due time and is admissible given that these earlier trade marks were registered more than five years prior to the relevant date mentioned above.

 

On 02/06/2020 the opponent was given two months to file the requested proof of use.

 

The opponent did not submit any evidence concerning the use of the aforementioned earlier marks. It did not argue that there were proper reasons for non-use either.

  

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition in so far as it is based on those earlier marks.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR insofar as it is based on European Union trade mark registrations No 9 010 323 and No 3 268 836.

As the opposition is also based on European Union trade mark registration No 16 253 601, the Opposition Division will further examine the opposition in relation to this registration below.

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 goods and services on which the opposition is based are the following:

Class 18: Leather and imitation leather; Briefcases [leather goods]; Briefcases [leather goods]; Travelling bags made of imitation leather; Leather purses; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Backpacks; Portfolio bags; Haversacks; Handbags and travel bags; Walking sticks; Whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; Business management; Business administration; Office functions; Procurement services for others (purchasing of goods and services for other businesses); Market research; Sponsorship search; Business research; Commercial or industrial management assistance; Compilation of information into computer databases; Publicity columns preparation; Shop window dressing; Demonstration of goods; Dissemination of advertising matter; Sample distribution; Marketing studies; Invoicing; Organisation of trade fairs for commercial or advertising purposes; Commercial administration of the licensing of the goods and services of others; Consumers (Commercial information and advice for -) [consumer advice shop]; Marketing services; Fashion shows for promotional purposes (Organization of -); Exhibitions for commercial or advertising purposes; Presentation of goods on communication media, for retail purposes; Economic forecasting; Production of advertising films; Sales promotion for others; On-line advertising on a computer network; Opinion polling; Wholesaling and retailing in shops and via global computer networks of all kinds of footwear, clothing, headgear, animal skins, hides, trunks and travelling bags, umbrellas, backpacks, pocket wallets, haversacks, handbags and bags for travel, parasols and walking sticks, whips, harness and saddlery.

The contested goods, after a limitation, are the following:

 

Class 9: Cases for cell phone, smart phone; Screen Protector for cell phone, smart phone.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 contested goods in Class 9 are dissimilar to all the opponent’s goods and services in Classes 18, 25 and 35, since they do not have any relevant points of contact that could justify finding a level of similarity between them.

- As regards the opponent’s goods in Classes 18 and 25, these are leather, imitation leather and a variety of articles made of leather or its imitations, such as those used for carrying different items and/or to accessorize (Class 18) and clothing, footwear and headgear (Class 25). These goods and the contested goods differ in their nature, purpose and method of use. They have different origins and distribution channels. Even though the contested cases for cell phone, smart phone might have some distant link to the fashion market, the mere fact that someone might want to match such cases and, for instance, purses or clothing is not sufficient to conclude that these goods are complementary and therefore similar. Goods can only be considered to be complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other and is not merely ancillary. In the present case, these conditions are not fulfilled. Furthermore, these goods are not in competition with each other. The production of these goods involves different know-how, in that the contested cases for cell phone, smart phone serve specific functionalities that are not of a purely aesthetic nature, as they are specifically adapted for carrying, protecting a phone. Even though some fashion or travel-goods brands also sell goods such as cases for phones, this is not the rule in the relevant market sectors, and rather applies only to (economically) successful brands. These goods do not belong to the same category of goods and they are not regarded as components of a general array of goods that potentially have the same commercial origin;

- As regards the opponent’s services in Class 35, these are mainly services rendered by persons or organizations principally with the object of help in the working or management of a commercial undertaking, and help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, advertising services as well as wholesale and retail services with regard to specific goods. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. The contested goods and these services have a different purpose, are neither complementary nor in competition, and do not usually originate from the same producers. The opponent’s advertising services for instance consist of providing others with assistance in 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. 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. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised, including the contested goods in Class 9. Also the contested goods and the opponent’s wholesaling and retailing in shops and via global computer networks of all kinds of footwear, clothing, headgear, animal skins, hides, trunks and travelling bags, umbrellas, backpacks, pocket wallets, haversacks, handbags and bags for travel, parasols and walking sticks, whips, harness and saddlery are not similar. As explained above, the contested goods and these services, apart from being different in nature (intangible versus tangible), they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary. Similar considerations apply to the opponent’s wholesaling as these services revolve around the sale of goods in quantity, usually for resale.

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

 

 

Solveiga BIEZA

Christophe DU JARDIN

Martin MITURA

 

 

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.