OPPOSITION No B 2 563 040
Publicaciones Heres, S.L., Gran Vía Carlos III, 124, 5é (Edifici City), 08034 Barcelona, Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative)
a g a i n s t
Koninklijke Philips N.V., High Tech Campus 5, 5656 AE Eindhoven, The Netherlands (applicant), represented by Philips Intellectual Property & Standards, High Tech Campus 5, Bldg. HTC 5, 5656 AE Eindhoven, The Netherlands (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods
European Union trade mark application No
Earlier trade mark
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 goods and services
The goods and services on which the opposition is based are the following:
Class 16: Printed publications, magazines, periodicals, books and printed matter.
Class 41: Publishing services of all kinds.
The contested goods are the following:
Class 9: Remote controls, control panels, control hubs, electronic tablets, wireless sensors and smart device apps all for audio sets, television sets, video recorders, DVD and optical storage disc sets, televisions, air conditioners, for wireless connecting the internet, for audio/video/photo content navigation, for home automation control.
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 goods in Class 9
The contested remote controls are devices used to control an apparatus or machine from a distance; the contested control panels are electrical devices each consisting of a flat, insulated surface that contains switches, dials and meters for controlling other electrical devices; the contested control hubs are devices that connect the devices of a home automation network and control communications between them; the contested electronic tablets are wireless, touch–screen, personal computers; the contested wireless sensors are transducers with a communications infrastructure for monitoring and recording conditions at various locations; and the contested smart device apps are applications for interactive electronic gadgets that understand simple commands sent by users and assist with one’s daily activities. All the abovementioned contested goods are used in relation to audio sets, television sets, video recorders, DVD and optical storage disc sets, televisions, air conditioners, for wireless connecting the internet, for audio/video/photo content navigation, for home automation control. These goods are not related to the opponent’s goods in Class 16, which are mainly printed matter, because they have different natures and purposes, they are not in competition with one another or complementary, and they cannot be substituted for one another. Therefore, they are dissimilar.
A similar conclusion can be drawn in relation to the contested goods and the opponent’s services in Class 41. By their nature, goods are generally dissimilar to services; this is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, that is, movables or real estate. Services, however, consist in the provision of intangible activities. Therefore, the opponent’s publishing services of all kinds and the contested goods have different natures and purposes, they satisfy different needs, they are provided by different types of companies and they target different consumers. Moreover, they are neither in competition with nor complementary to each other. Therefore, they are dissimilar.
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 contested goods 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Ana MUÑIZ RODRÍGUEZ
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.