OPPOSITION Nо B 3 113 865

 

Servis Climax A.S., Jasenice 1253, 75501 Vsetín, Czech Republic (opponent), represented by Jana Holomková, Jasenice 1253, 75501 Vsetín, Czech Republic (employee) 

 

a g a i n s t

 

Nav-System S.P.A., Piazzale P. Sraffa, 45, 47521 Cesena, Italy (applicant), represented by Marco Montebelli, Via Vega, 39, 47924 Rimini, Italy (professional representative).

 

On 18/01/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 113 865 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 18 093 104 ‘CLIMAX’ (word mark). The opposition is based on European Union trade mark registration No 10 210 995, (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.

 

 

a) The goods

 

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

 

Class 6: External blinds of metal; jalousies of metal; roller shutters of metal; outdoor roller shutters of metal; cover plates for blinds (metal).

Class 19: Jalousies, not of metal; blinds of canvas (adjustable); roller blinds (outdoor), not of metal and not of textile; awnings, not of metal, for building; insect screens, not of metal.

Class 20: Slatted indoor blinds; window shades [blinds]; roller blinds (indoor); pleated blinds; vertical louvre blinds; Japanese sliding partitions; textile sliding partitions.

Class 22: Slatted window blinds; roller blinds of synthetic materials; awnings; Japanese sliding partitions; textile sliding partitions.

Class 24: Roller blinds of textile; pleated blinds.

The contested goods are the following:

Class 17: Insulation sheets; fire resistant insulated panels; fibreboard for high temperature insulation.

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 insulation sheets; fire resistant insulated panels; fibreboard for high temperature insulation consist of special sheets, panels and fibreboard used for insulation, namely to ‘protect (something) by interposing material that prevents the loss of heat or the intrusion of sound’ or ‘prevent the passage of electricity to or from (something) by covering it in non-conducting material’ (information extracted from Collins Dictionary on 18/01/2021 at https://www.lexico.com/definition/insulate). The opponent’s goods consist of metallic or non-metallic types of blinds, sliding partitions, jalousies and insect screens. The compared goods are dissimilar to all opponent’s goods in Classes 6, 19, 20, 22 and 24 as their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

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 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

 

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

 

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

 

 

Tzvetelina IANTCHEVA

Francesca DRAGOSTIN

Cristina SENERIO LLOVET

 

 

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.