OPPOSITION Nо B 3 121 705

 

Vivesa Holding S.R.O., Budovatelská 1178/35, 743 01 Bílovec, Czech Republic (opponent), represented by Propatent Intellectual Property Law Firm, Pod Pekařkou 107/1, 147 00 Podolí, Prague 4, Czech Republic (professional representative) 

 

a g a i n s t

 

Octagon Digital Real Estate T&TM Ltd, Archiepiskopou Makariou III, 61 Serghides House, 1st Floor, Flat/office 102, 6017 Larnaca, Cyprus (applicant), represented by Zumtobel Kronberger Rechtsanwälte Og, Rainbergstr. 3c, 5020 Salzburg, Austria (professional representative).

On 04/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 121 705 is rejected in its entirety.

 

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

 

REASONS

 

On 18/05/2020, the opponent filed an opposition against some of the services of European Union trade mark application No 18 199 004 (figurative mark), namely against some of the services in Class 36. The opposition is based on Czech trade mark registration No 350 479, ‘IMCOBUY’ (word mark) and international trade mark registration designating the European Union No 1 286 858, ‘IMCOBUY’ (word 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 services

 

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

Czech trade mark registration No 350 479

Class 35: Business administration assistance, business administration.

International trade mark registration designating the European Union No 1 286 858

Class 35: Business management; business administration. 

The contested services are the following:

 

Class 36: Finance services; monetary affairs.

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.

 

Contested services in Class 36

The earlier business management, business administration and business administration assistance in Class 35 comprise a range of activities aimed to support other businesses. These activities are rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. Examples of such activities are business research and appraisals, cost-price analyses and organisation consultancy, since they are all intended to help with the strategy of a commercial undertaking. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the management of a business, such as how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, carry out marketing, research consumer trends, and launch new products; how to create a corporate identity, etc.

On the other hand, the contested services in Class 36 are finance services and monetary affairs, that concern economic services provided by the finance industry, which encompasses a broad range of businesses that manage money, including credit unions, banks, credit-card companies, insurance companies, accountancy companies, consumer-finance companies, stock brokerages, investment funds, individual managers, and some government-sponsored enterprises. The finance industry includes a broad range of organisations that deal with the management, investment, transfer, and lending of money. Among these organisations are, for example, banks, credit card companies, consumer finance companies, stock brokerages and investment funds.

Contrary to the opponent’s submissions, the services in conflict are dissimilar. They have a different nature and purpose. Furthermore, they have different distribution channels, relevant public and commercial origin, and they are neither in competition nor are they complementary. Indeed, although financial companies such as banks and credit companies often provide advice relating to financial services, they do not as a rule provide any of the opponent’s services in Class 35, such as business management advice and business administration. It is true that every conceivable service that may be provided to the public will have a financial aspect to it and all will have economic factors to be taken into consideration. Nevertheless, this is not sufficient ground for finding the opponent’s services in Class 35 similar to the applicant’s ‘finance services and monetary affairs’ in Class 36.

The opponent refers to previous decisions of the Office to support its arguments, more precisely, to prove similarity between the contested services and the ones on which the opposition is based. 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).

  

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In the present case, the previous cases, namely Opposition Decision No. B 1 371 055 upheld by the decision of the Second Board of Appeal of 22/04/2010, R 1101/2010-2, Impulso creador vs. IMPULSO (fig.), referred to by the opponent, is an isolated example of such assessment by the Office, while there is a consistent practice of finding the services in question dissimilar, as is reflected in a number of decisions of the Office, such as decision of the Fifth Board of Appeal of 16/04/2021 in case R 2060/2020-5 (insha), decision of the Second Board of Appeal of 08/03/2011 in case R 134/2009-2 (TELESIS), decision of the First Board of Appeal of 05/11/2009 in case R 1790/2008-1 (ALIPAY), decision of the Second Board of Appeal of 15/09/2008 in case R 153/2008-2 (caixanet.cat) etc.

Therefore, the reference of the opponent to the abovementioned previous decisions cannot alter the finding thoroughly explained above.

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 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

 

 

Michaela SIMANDLOVA	Claudia SCHLIE	Lucinda CARNEY

  

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.