OPPOSITION Nо B 3 126 891

 

The Paper & Office Equipment Spain Ass, S.A., Polígono Industrial Bakiola, nave 1, 48498 Arrankudiaga (Vizcaya), Spain (opponent), represented by Maria Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative) 

 

a g a i n s t

 

Bixalo Limited, Palaio Limani Lemessou X2 Bulding 1st Floor, 3037 Limassol, Cyprus (applicant), represented by Chrisanthi Antonopoulou, Ioannou Soutsoy 20-22, 11474 Athens, Greece (professional representative).

On 09/08/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 126 891 is rejected in its entirety.

 

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

REASONS

 

On 28/07/2020, the opponent filed an opposition against some of the services of European Union trade mark application No 18 196 003 (figurative mark), namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 17 630 252 ‘VOLTA’ (word mark) and European Union trade mark registration No 17 993 622 ‘VOLTA’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

European Union trade mark registration No 17 630 252 on which the opposition is, inter alia, based is at risk due to pending cancellation proceedings. However, as the outcome of these proceedings does not have an impact on the outcome of the present case for reasons that will become apparent below (dissimilarity of goods and services), the examination of the opposition will proceed as if the existence and validity of European Union trade mark registration No 17 630 252 is proven.

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 on which the opposition is based are the following:

1) European Union trade mark registration No 17 630 252 (earlier mark 1)

Class 9: Electric cells.

2) European Union trade mark registration No 17 993 622 (earlier mark 2)

Class 12: Tubeless tires [tyres] for bicycles, cycles; direction indicators for bicycles; bicycle gears; dress guards for bicycles, cycles; dress guards for bicycles, cycles; wheels for bicycles, cycles; bicycle bells; cycle saddles; bicycle tires [tyres]; brakes for bicycles, cycles; frames for bicycles, cycles; chains for bicycles, cycles; shock absorbers for bicycles; spindles of bicycles; bicycle stabilisers; structural parts of bicycles; chains for bicycles, cycles; forks [bicycle parts]; bicycle handlebar grips; audible warning systems for bicycles; fitted bicycle covers; front forks for cycles; chains [bicycle parts]; stands for bicycles [parts of]; stands for bicycles [parts of]; tubeless tires [tyres] for bicycles, cycles; tubeless tires [tyres] for bicycles, cycles; spokes for bicycles, cycles; spokes for bicycles, cycles; spokes for bicycles, cycles; handle bars for bicycles, cycles; direction indicators for bicycles; direction indicators for bicycles; wheels for bicycles, cycles; hubs for bicycle wheels; inner tubes for bicycles, cycles; rims for wheels of bicycles, cycles; brake levers for cycles; disk wheels [bicycle parts]; brakes for bicycles, cycles; bicycle tires [tyres]; frames for bicycles, cycles; chains for bicycles, cycles; bicycle stands; bicycle stands; bicycle stands; sissy bars for bicycles; bicycle handlebar grips; freewheels for bicycles; chainwheels for bicycles; chain guards for bicycles; gear wheels for bicycles; metal bells for bicycles; bicycle brake lever grips; suspension systems for bicycles; brake cables for bicycles; bicycle racks for vehicles; bicycle carriers; saddles for bicycles, cycles or motorcycles; bells for bicycles, cycles; gear wheels [bicycle parts]; direction indicators for bicycles; wheels for bicycles, cycles; rims for wheels of bicycles, cycles; rims for wheels of bicycles, cycles; fork crown covers [bicycle parts]; bicycle tires [tyres]; handle bar ends [bicycle parts]; rims for wheels of bicycles, cycles; drive chains [bicycle parts]; hydraulic rim brakes for bicycles; brake shoes [bicycle parts]; gear wheels [bicycle parts]; toeclips for use on bicycles; hydraulic disc brakes for bicycles; front fork joints [bicycle parts]; tubeless tires [tyres] for bicycles, cycles; toe straps for use on bicycles; pedals for cycles; handlebar controls for mopeds; motorcycle frames; motorcycle chains; motorcycle handlebars; motorcycle handlebars; motorcycle saddles; kickstands for motorcycles; pedals for motorcycles; motorcycle frames; wheels for motorcycles; cranks for motorcycles; mudguards for motorcycles; tyres for motorcycles; shock absorbers for motorcycles; structural parts for motorcycles; bells for motorcycles; motorcycle swing arms; front forks for motorcycles; sprockets for motorcycle drives; kickstands for motorcycles; chains for driving motorcycles; spokes for motorcycles; freewheels for motorcycles; brake calipers [parts of motorcycles]; wheel rims for motorcycles; brake pedals [parts of motorcycles]; brake cables [parts of motorcycles]; handle bar dampers [parts of motorcycles]; tyres for wheelchairs; arm rests for wheelchairs.

The contested services are the following:

Class 35: Advertising, marketing and promotional services; arranging of buying and selling contracts for third parties; arranging subscriptions of the online publications of others; arranging subscriptions to information media; production of teleshopping programmes; providing consumer information relating to goods and services; providing market information in relation to consumer products; provision of information concerning commercial sales; providing consumer product information via the internet; intermediary services relating to advertising.

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.

All the contested services are aimed at supporting or helping other businesses to do or improve business. They are therefore in principle directed at the professional public.

The contested advertising, marketing and promotional services 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.

The contested arranging of buying and selling contracts for third parties are specialised business services essentially provided by, for instance, business intermediaries, and that aim at encouraging and facilitating transactions between a buyer and a seller.

The contested arranging subscriptions of the online publications of others; arranging subscriptions to information media are subscription services that give the consumers regular access to a product or service. This is usually done in return for a particular sum of money, although they are sometimes free (e.g. to build brand loyalty). These kinds of services are usually offered by different companies to those actually producing/providing the goods or services to which the subscriptions relate. They are offered from business to business, in order to assist the regular sale/provision of goods or services for the companies actually producing/offering them.

The contested production of teleshopping programmes are services provided by specialised companies consisting of the conception and creation of teleshopping programmes.

The contested providing consumer information relating to goods and services; providing market information in relation to consumer products; provision of information concerning commercial sales; providing consumer product information via the internet are used by businesses to guide their planning and operations, and the evaluation of their activities and relate to a variety of services concerning the operations of a company and to any information which can help a business to know ‘itself’, its competitors and its environment and thus essentially help it to improve in the long run.

The contested intermediary services relating to advertising are rendered by specialised companies (usually advertising agencies) which assist in, inter alia, the flow of goods and services from producers to end-users. Such specialised companies put the parties concerned in contact, negotiate between them and get commission for such services.

The opponent’s goods in Class 9 of earlier mark 1 are devices used to generate electricity, or to make chemical reactions by applying electricity.

The opponent’s goods in Class 12 of earlier mark 2 cover, broadly speaking, goods related to cycles, bicycles, motorcycles and their parts, as well as tyres for wheelchairs and arm rests for wheelchairs.

The contested services in Class 35 have no relevant connection to any of the opponent’s goods in Class 9 of earlier mark 1 and Class 12 of earlier mark 2 on account of the vast difference between the natures, purposes and usual producers/providers. It is very unlikely that producers/providers of any of the opponent’s goods (for example producers of electric cells or cycles) will also provide (for example) advertising, marketing and promotional services. Furthermore, they are neither complementary nor in competition.

The opponent claims that the contested services are complementary to the opponent’s goods. However, goods and services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). This is not the case here, especially considering that these goods and services are aimed at a different public, as the producers of the goods in Classes 9 and 12 are at best the potential customers of the services offered in Class 35. By definition, goods (and services) intended for different publics cannot be complementary (22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30; 12/07/2012, T-361/11, Dolphin, EU:T:2012:377, § 48). Therefore, the claim of the opponent must be set aside.

Even if the opponent’s activities also entail some of the services as covered by the contested sign (e.g. advertising, marketing and promotional services), the marketing, advertising or promotion of one’s own goods under one’s own brand is not a service in itself because it is only intended to increase the sales of one’s own goods. In any event, the fact that (some of) the opponent’s goods may appear in, for example, advertising provided by the applicant is insufficient for finding similarity.

Therefore, all of the contested services in Class 35 are dissimilar to the opponent’s goods in Classes 9 and 12.

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

 

 

Christophe DU JARDIN

Agnieszka PRZYGODA

Marta ALEKSANDROWICZ-STANLEY

 

 

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.