OPPOSITION No B 2 516 717
Viajes Levante Tour, S.A., C/. Albacete nº 19, Valencia, Spain (opponent), represented by J. Lopez Patentes y Marcas, S.L., C/. Paz, nº 14-2º-3ª, 46003 Valencia, Spain (professional representative)
a g a i n s t
Coffin Turbo Pump Sales (Europe) B.V., Westerkade 10, 3016 CL Rotterdam, the Netherlands (applicant), represented by Michiel Steenhuis, Borneostraat 10, 5215 VC s-Hertogenbosch, the Netherlands (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the services of European
Union trade mark application No
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.
The services on which the opposition is based are the following:
Class 39: Travel agency services.
The contested services are the following:
Class 37: Coating services for ships; removal of sea vegetation on ship hulls; anti-rust treatment for ships; installation of systems for loading and unloading of bulk materials; installation in ships; maintenance, repair and overhaul of engines and parts in ships; consultancy relating to surface treatment projects; cleaning of ships; cleaning of outdoor decks and decks within; maintenance and repair of water treatment installations; consultancy services relating to all the above services.
Class 42: Development of marine vessels; development of systems for the benefit of shipping; development of coatings for metal; design of marine vessels; advising on the design of marine vessels; ship design; interior design for ships.
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 Classes 37 and 42
The opponent’s travel agency services in Class 39 consist in arranging and organizing travel, for example transport or tours, for customers wishing to travel. These services are normally provided by agencies in office-like establishments or via the internet.
The contested services in Class 37 are mostly various installation, maintenance and repair services concerning ships. These services are normally provided in ports and docks by highly specialised workers or engineers. Furthermore, the list of the applicant’s services in Class 37 includes installation of systems for loading and unloading of bulk materials which may concern also other means of transport than ships, consultancy relating to surface treatment projects which can relate to any type of surface (not necessarily on ships) and maintenance and repair of water treatment installations which can be of any type (i.e. not necessarily on ships). These services are provided by firms specialised in the respective fields.
The contested services in Class 42 consist mostly of the design and development of ships. These services are provided by marine engineers and designers in specialised offices. Moreover, the list of the applicant’s services in Class 42 contains development of coatings for metal which is a specialised service that can relate to any type of coatings of any metal objects (i.e. not necessarily ships).
All the contested services in Classes 37 and 42 are clearly dissimilar to all the opponent’s services in Class 39. There is absolutely no link between them according to the relevant factors of similarity mentioned above.
The services compared have a very different nature because the opponent’s services consist in making travel arrangements (bookings etc.) from an office whereas the contested services consist essentially of physical work on ships or other objects (Class 37) or designing and developing ships in a specialised company or developing coatings. The purpose of the services is totally different because the opponent’s services assist clients in travelling whereas the contested activities serve, for example, to build a ship or repair it. The corresponding methods of use of the services are clearly different as well. Since the services in dispute satisfy very different needs, they are clearly not in competition. They are not complementary either because they are neither necessary nor important for the use of each other. Moreover, the usual commercial origin of the services and their distribution channels are totally different. The provision of these services requires entirely different knowledge and experience and the services target different public.
The opponent argues that the services compared all concern the transport and carriage of passengers on ships. This may be true to some extent in the abstract but it must be noted that the services of the parties concern ships and transport on them from totally different angles: the opponent’s services consist in arranging a trip on a ship whereas the contested services consist in designing and building/repairing a ship. Such a link between the services is vary vague and cannot lead to a finding of similarity from the relevant consumer’s point of view.
The opponent also argues that the opponent’s and the applicant’s services compete in similar business areas. The Opposition Division cannot agree with this claim for the reasons mentioned in the preceding paragraph. There is absolutely no competition between arranging a trip on a ship and building or repairing a ship as such.
The opponent also submitted arguments concerning the applicant’s services in Class 35 but since these services have not been contested by the opponent in its notice of opposition, these arguments are irrelevant.
According to Article 8(1)(b) EUTMR, the identity or 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.
According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.