OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 469 792
Grupo Iberoamericano de Fomento, S.A., Paseo de la Castellana, 110, Planta 8ª, 28046 Madrid, Spain (opponent), represented by Arochi & Lindner, S.L., C/ Serrano 28, 1°C, 28001 Madrid, Spain (professional representative)
a g a i n s t
Contenga Holding Ltd., Akara Bldg. 24 De Castro Street Wickhams Cay I, Road Town, Tortola, Virgin Islands of Great Britain (applicant), represented by Rebernik & Scheel Attorneys-at-law, Valkendorfsgade 16, 1., 1151 Copenhagen K, Denmark (professional representative).
On 23/02/2016, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the services of Community
trade mark application No
Earlier trade mark
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.
The services on which the opposition is based are the following:
Class 37: Building construction; repair; installation services.
The contested services are the following:
Class 35: Business management and enterprise organization consultancy; Business management and organization consultancy; Business consultation and management regarding marketing activities; Business consultation and management regarding launching of new products; Business consulting; Business organisation advice; Business consultancy and advisory services; Business advisory services relating to company performance; Business consulting; Business consultancy to firms; Business management and organization consultancy; Personnel recruitment; Consultancy of personnel recruitment; Consultancy of personnel recruitment; Consultancy of personnel recruitment; Advertising, marketing and promotional consultancy, advisory and assistance services; Professional business consultation relating to the operation of businesses; Business efficiency expert services; Personnel recruitment; Personnel selection, for others, none of the aforesaid services including services relating to real estate.
Class 41: Coaching [training]; Coaching in economic and management matters; Coaching; Industrial relations training; Staff training services.
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 services in Class 35 are aimed at supporting or helping other businesses to conduct or improve their business. The contested services in Class 41 consist in the provision of training. The opponent’s services consist in the physical construction of buildings as well as the repair and installation of goods. The compared services have different natures, purposes and methods of use. They are not usually provided by the same undertakings or through the same distribution channels. Furthermore, the services in question are not interchangeable. Neither are they complementary in the sense that one is indispensable (essential) or important (significant) for the use of the other. The fact that the opponent’s services in Class 35 may concern the businesses of construction, repair or installation is not enough for finding similarity. Therefore, the compared services are dissimilar.
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 services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) CTMR is not fulfilled, and the opposition must be rejected.
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
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.