OPPOSITION No B 3 084 505

S.C. Intermark S.r.L., Lucian Blaga street, nr. 8, 415600 Stei, Romania (opponent), represented by Răzvan Dincă, str. Popa Tatu, nr. 49, 1st District, 010803 București, Romania (professional representative)

a g a i n s t

Алфа Пейпър Еоод, ул Антим I, № 12, 4000 Пловдив, Bulgaria (applicant), represented by Vassia Ivanova Germanova, Compl. Druzhba 2, bl. 273, vh. A, ap. 24, 1582 Sofia, Bulgaria (professional representative).

On 15/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 084 505 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 of European Union trade mark application No 18 017 916 for the figurative sign . The opposition is based on European Union trade mark registration No 8 562 308 for the figurative mark . 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

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

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle, yeast, ice.

Class 35: Advertising; business management; business administration; office functions; administrative processing of purchase orders; advertising/ publicity; advertising agencies / publicity agencies; advertising by mail order; advisory services for business management; arranging newspaper subscriptions for others; arranging subscriptions to telecommunication services for others; auctioneering; auditing; bill-posting / outdoor advertising; book-keeping / accounting; business appraisals; business information; business inquiries; business investigations; business management and organization consultancy; business management assistance; business management consultancy; business management of hotels; business management of performing artists; business organization consultancy; business research; commercial administration of the licensing of the goods and services of others; commercial information agencies; commercial information and advice for consumers [consumer advice shop]; commercial or industrial management assistance; compilation of information into computer databases; compilation of statistics; computerized file management; cost price analysis; data search in computer files for others; demonstration of goods; direct mail advertising; dissemination of advertising matter; distribution of samples; document reproduction; drawing up of statements of accounts; economic forecasting; efficiency experts; employment agencies; evaluation of standing timber / valuation of standing timber; grading of wool / evaluation of wool; Import-export agencies; invoicing; layout services for advertising purposes; marketing research; marketing studies; modelling for advertising or sales promotion; news clipping services; office machines and equipment rental; on-line advertising on a computer network; opinion polling; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes / organization of trade fairs for commercial or advertising purposes; outsourcing services [business assistance]; payroll preparation; personnel management consultancy; personnel recruitment; photocopying; presentation of goods on communication media, for retail purposes; price comparison services; procurement services for others [purchasing goods and services for other businesses]; professional business consultancy; psychological testing for the selection of personnel; public relations; publication of publicity texts; publicity columns preparation; publicity material rental; radio advertising / radio commercials; relocation services for businesses; rental of advertising space; rental of advertising time on communication media; rental of photocopying machines; rental of vending machines; sales promotion for others; secretarial services; shop window dressing; shorthand; sponsorship search; systemization of information into computer databases; tax preparation; telephone answering for unavailable subscribers; television advertising / television commercials; transcription; updating of advertising material; word processing; writing of publicity texts; none of the afore-mentioned services including typing.

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

Class 16: Paper and cardboard; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; absorbent paper; absorbent sheets of paper or plastic for foodstuff packaging; placards of paper or cardboard; humidity control sheets of paper or plastic for foodstuff packaging; decorative paper centerpieces; table decorations of paper; flags of paper; coin mats; place cards; cocktail mats of paper; table place setting mats of card; tissue paper; kitchen rolls [paper]; paper towels; drip mats of cardboard; drip mats of paper; coasters of cardboard; coasters of paper; mats of paper for drinking glasses; tablecloths of paper; table linen of paper; napkins made of paper for household use; table napkins of paper; napkins of cellulose for household purposes; handkerchiefs of paper; paper toilet seat covers; dental tray covers of paper; paper toilet bowl liners; paper pads for changing diapers; till rolls; paper doilies; garbage bags of paper [for household use]; paper cocktail parasols; paper lace; food-wrapping paper; shelf paper; napkin paper; paper for use on examination tables; cellulose wipes; tissues; handkerchiefs of paper; paper washcloths; towels of paper for cleaning purposes; paper wipes; facial tissues of paper; tissues of paper for removing make-up; paper handtowels; toilet rolls; toilet rolls.

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 are paper and cardboard and various products made thereof, such as absorbent paper; coasters of cardboard or facial tissues of paper. They have no points of contact with the opponent’s goods and services. The opponent’s goods are either cosmetics and cosmetics-related products, for example perfumery in Class 3, or various types of foodstuffs and goods related thereto, for instance cocoa, sugar, rice in Class 30. Furthermore, the opponent’s services are various services in the field of advertising; business management; business administration and office functions. They differ not only in their nature and purpose, but also in their distribution channels, producers and method of use. In addition, since they satisfy different needs, they are neither in competition with each other nor complementary to each other. Therefore, they are dissimilar.

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 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

Teodora TSENOVA-PETROVA

Michal KRUK

Chantal VAN RIEL

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.