OPPOSITION No B 2 409 376

Alberto Couto Alves, S.A., Lugar de Rio, 4770-616 Vila Nova de Gaia, Portugal (opponent), represented by Guimarque Gabinete de Marcas e Patentes, LDA, Avenida António José Gomes, 60-B 1ºE, 2805-086 Almada, Portugal (professional representative)

a g a i n s t

ΑΠΟΣΤΟΛΙΔΗΣ ΑΕΒΕ, ΒΙ.ΠΕ. ΣΕΡΡΩΝ, 62100 ΣΕΡΡΕΣ, Greece (applicant), represented by Evangelia Spireli, 52 Skoufa str., 106 72 Athens, Greece (professional representative).

On 07/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 409 376 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 and services of Community trade mark application No 12 946 703 for the figurative mark . The opposition is based on Portuguese trade mark registration No 462 989 for the figurative mark , Portuguese trade mark registration No 20 455 for the figurative mark and Portuguese trade mark registration No 20 445 for the figurative mark . The opponent invoked Article 8(1)(a) and (b) CTMR.

PRELIMINARY REMARK

On 04/12/2014, the applicant limited its list of goods and services by removing all services in Class 42 from the list. The opponent did not withdraw the opposition and the present opposition will, consequently, be considered directed towards the remaining goods of the contested application.

SUBSTANTIATION

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) CTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) CTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade marks on which the opposition is based.

On 10/12/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 15/04/2015.

The opponent submitted evidence that only partly coincides with the marks invoked in the notice of opposition.

In the notice of opposition, the opponent indicated that, as far as earlier Portuguese trade mark registration No 462 989 is concerned, the opposition is based on some of the services of this mark, namely on architecture; architectural consultation; industrial design; design of interior decor; design of interior decor; energy auditing; laboratory (scientific -) services; research and development for others; construction drafting; technical project studies; consultancy in the field of energy-saving; surveying; urban planning; technical research; technical project studies in Class 42. However, the services presented in the notice of opposition only partly coincide with the services displayed in the translation of the registration certificate for this mark. Consequently, the Opposition Division can take into consideration only the services of the notice of opposition that were subsequently substantiated by the later submission of the registration certificate.

These services are:

Class 42: Architecture; architectural consultation; industrial design; design of interior decor; design of interior decor; research and development for new products to third; construction drafting; technical project studies; consultancy in the field of energy-saving; surveying; technical project studies.

As far as earlier Portuguese trade mark registration No 20 455 is concerned, none of the goods and services claimed to be covered by this trade mark in the notice of opposition were subsequently confirmed by the registration certificates submitted. Therefore, this mark must be seen as non-substantiated in its entirety.

As far as earlier Portuguese trade mark registration No 20 445 is concerned, the opponent did not submit any certificate corresponding to the trade mark number indicated in the notice of opposition. However, the opponent submitted a certificate for Portuguese trade mark registration No 20 456. Consequently, the existence of the alleged earlier Portuguese trade mark registration No 20 445 was not proven. If the submission of the certificate for Portuguese trade mark registration No 20 456 was intended to constitute the invocation of an additional right with this registration number, this mark must be rejected as inadmissible, as it was submitted after the opposition period.

According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on earlier Portuguese trade mark registrations No 20 455 and No 20 445. In relation to Portuguese trade mark registration No 462 989, the opposition must be rejected as unfounded as far as it is based on services that were not subsequently substantiated for this mark.

PROOF OF USE

In accordance with Article 42(2) and (3) CTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

According to Article 42(2) and (3) CTMR, the earlier mark can only be subject to the request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark.

In the present case the contested trade mark was published on 08/09/2014.

Portuguese trade mark registration No 462 989 was registered on 21/05/2010. Therefore, the request for proof of use is inadmissible.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 and services

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

Portuguese trade mark registration No 462 989

Class 42: Architecture; architectural consultation; industrial design; design of interior decor; design of interior decor; research and development for new products to third; construction drafting; technical project studies; consultancy in the field of energy-saving; surveying; technical project studies.

The contested goods are the following:

Class 6: Metal pipe clips; Pipework of metal; Clips of metal for cables and pipes; Chains of metal; Bolts of metal; Brackets of metal for building; Tanks of metal; Ducts of metal for ventilating and air conditioning installations; Posts of metal for electric lines; Masts of metal; Chimney cowls of metal; Chimney shafts of metal; Buildings of metal; Boxes of common metal; Jalousies of metal; Angle irons; Chimneys of metal.

Class 9: Electrical conductors; Terminals [electricity]; Surge arresters; Ammeters; Transponders; Detectors; Smoke detectors; Anode batteries; Rectifiers; Anti-interference devices [electricity]; Resistances, electric; Respirators for filtering air; Masts for wireless aerials; Fuses; Time switches, automatic; Voltmeters; Electric loss indicators; Temperature indicating apparatus; Switches, electric; Circuit closers; Distribution consoles [electricity]; Electricity control panels; Inverters [electricity]; Amplifiers; Identification threads for electric wires; Electrical inductors; Armatures [electricity]; Contacts, electric; Signs, luminous; Electric batteries; Relays, electric; Electricity transformers; Electromagnetic coils; Electromagnetic switches; Sound alarms; Temperature controlling apparatus; Starter cables for motors; Electrical cables; Junction sleeves for electric cables; Magnetic wires; Optical fibers; Coaxial cables; Optical fibers; Telephone wires; Camcorders; Antennas; Electric door bells; Alarm bells, electric; Bells [warning devices]; Push buttons for bells; Branch boxes [electricity]; Identification sheaths for electric wires; Junction boxes [electricity]; Switchboxes [electricity]; Integrated circuits; Integrated circuits; Photovoltaic cells; Flashing lights [luminous signals]; Intercommunication apparatus; Lasers, not for medical purposes; Vacuum tubes [radio]; Peepholes [magnifying lenses] for doors; Lamps (Darkroom -) [photography]; Megaphones; Commutation (Electric apparatus for -); Measuring devices, electric; Meters; Electric batteries; Batteries for lighting; Video screens; Coaxial cables; Photographic flashlamps; Optical lanterns; Battery jars; Distribution boards [electricity]; Capacitors; Capacitors; Electrified rails for mounting spot lights; Plugs, sockets and other contacts [electric connections]; Rectifiers; Light dimmers (regulators), electric; Regulators [dimmers] (Light -), electric; Electrical surge arrestors; Sirens; Beacons, luminous; Lighting ballasts; Holders for electric coils; Electric couplings; Collectors, electric; Anti-theft warning apparatus; Fire alarms; Fire alarms; Whistle alarms; Alarms; Electric couplings; Connections for electric lines; Switchboards; Light (Traffic- -) apparatus [signalling devices]; Electric batteries; Solar batteries; Mobile phones; Telephones; Telephone transmitters; Telephone receivers; Remote control apparatus; Electricity mains (Materials for -) [wires, cables]; Surge arresters; Battery chargers; Neon signs; Signals, luminous or mechanical; Stage lighting regulators; Photovoltaic cells; Light diodes; Photometers.

Class 11: Discharge tubes, electric, for lighting; Air conditioning installations; Lamp shades; Lamp reflectors; Fans (Electric -) for personal use; Air conditioning fans; Fans [parts of air-conditioning installations]; Heat pumps; Ventilation hoods; Extractor hoods for kitchens; Luminous house numbers; Electric kettles; Fireplaces; Solar furnaces; Plate warmers; Plate warmers; Heating boilers; Radiators, electric; Electric lamps; Heating apparatus, electric; Heating apparatus for solid, liquid or gaseous fuels; Stoves; Burners; Air conditioners; Lights, electric, for Christmas trees; Solar thermal collectors [heating]; Water heaters; Gas lamps; Standard lamps; Standard lamps; Fairy lights for festive decoration; Fairy lights for festive decoration; Lightbulbs; Lamp globes; Ultraviolet ray lamps, not for medical purposes; Boilers, other than parts of machines; Lamp chimneys; Lamp reflectors; Light bulbs for directional signals for vehicles; Safety lamps; Lamp chimneys; Lamp casings; Luminous tubes for lighting; Aquarium lights; Burners for lamps; Lamp chimneys; Chandeliers; Chandeliers; Headlights for automobiles; Torches for lighting; Diving lights; Headlights for automobiles; Heating filaments, electric; Dampers [heating]; Stoves; Light-emitting diodes [LED] lighting apparatus; Heat accumulators; Flues for heating boilers; Chimney flues; Ash pits for furnaces; Fireplaces; Fire bars; Arc lamps; Feeding apparatus for heating boilers; Gas boilers; Gas lamps; Torches for lighting; Lighting apparatus for vehicles; Pocket torches, electric; Lanterns for lighting; Lamps; Lighting apparatus and installations; Lighting apparatus for vehicles; Light diffusers; Refrigerating appliances and installations; Refrigerating appliances and installations.

In principle, the same factors for comparing goods with goods are relevant for the comparison of services with services. However, in applying these factors, the basic difference between goods and services (tangible versus intangible) must be considered.

Furthermore, the same principles that apply for the comparison between goods and goods and between services and services apply in cases where goods are compared with services.

These 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.

By their nature, goods are generally dissimilar to services. They can, however, be complementary. Services can also have the same purpose as and thus be in competition with goods. It follows that, under certain circumstances, similarity between goods and services can be found.

In the present case, the contested goods and the opponent’s services are not complementary. They do not have the same intended purpose and are, consequently, not in competition. Furthermore, they differ in their methods of use, producers and distribution channels and are, as stated above, of clearly different natures. Therefore, the fact that a certain overlap regarding the relevant public may be established between some of the goods and services in question cannot be considered sufficient for a finding of similarity between any of the goods and services in question. The contested goods are, consequently, dissimilar to all of the opponent’s services.

2. Conclusion

According to Article 8(1)(b) CTMR, 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) CTMR is not fulfilled, and the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail in so far as based on grounds under Article 8(1)(a) CTMR because the signs are obviously not identical and, in addition, dissimilarity was found between all the applicant’s goods and the opponent’s services.

COSTS

According to Article 85(1) CTMR, 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 Rule 94(3) and (7)(d)(ii) CTMIR, 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

Anna BAKALARZ

Volker Timo MENSING

Vít MAHELKA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid. The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.