OPPOSITION No B 2 564 147

Casa Prem, S.L., calle Gamonal, 45, Pol Ind. Vallecas - Nave A/B, E-28031 Madrid,

Spain (opponent), represented by Wolke, Patentes y Marcas, Calle Alejandro Ferrant, 9, E-28045 Madrid, Spain (professional representative)

a g a i n s t

Coltech Επε Θεση Ρουμανι, GR-32011 Οινοφυτα Βοιωτιασ, Greece (applicant), represented by Dr. Helen G. Papaconstantinou and Partners

Law Firm, 2 Coumbari Street Kolonaki, GR-106 74, Athens, Greece (professional representative).

On 10/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 564 147 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 of European Union trade mark application No 13 954 102 , namely those in classes 1, 2 and 17. During the opposition proceedings the applicant limited the application to goods in classes 1 and 17.

The opposition is based on:

• European Union trade mark registration No 9 638 362

• Spanish trade mark registration No 2 652 844

• Spanish trade mark registration No 2 666 076 , and

• Spanish trade mark registration No 2 666 077 .

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.

1. The goods and services

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

EUTM No 9 638 362

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Fire-extinguishing apparatus.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 35: Advertising, commercial or industrial management assistance; Export, import or commercial agencies and retailing of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

ES No 2 652 844

Class 9: Photographic apparatus; apparatus for reproduction of sound; calculating machines, discs; equipment for data processing.

ES No 2 666 076

Class 14: Precious metals and their alloys and articles there of or plated not included in other classes, jewelry; jewelry; precious stones; relojeria and chronometric instruments.

ES No 2 666 077

Class 11: Apparatus for lighting; heating; steam generating; cooking; refrigerating; drying; ventilating; water supply and sanitary facilities.

The contested goods are the following:

Class 1: Polyurethanes; Polyurethane resins; Polyurethane coatings (other than paints); Polyurethane cross-linking agents for use in paints; Chemical precursors for making polyurethane foam; Raw chemicals for use in the manufacture of polyurethane resins; Unprocessed artificial resins; Synthetic resin plastics (unprocessed); Synthetic resin adhesives for industrial purposes; Synthetic resin compositions (unprocessed) for industrial purposes; Synthetic resin adhesives for laminating purposes; Polyurethane adhesives; Adhesives used in industry; Adhesives for use in the building industry; Construction industry adhesives; Synthetic resins for use in adhesives; Synthetic resin adhesives for industrial purposes; Synthetic resin adhesives.

Class 17: Polyurethane foam (semi-finished); Polyurethane foam for insulating purposes; Insulatory coatings of plastic resin; Mastics for sealing joints; Sealing compounds (mastics).

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 Classes 1 and 17

It should be noted from the outset that Class 1 contains mainly chemical products used in industry, science and agriculture, in particular those which go to the making of products belonging to other classes. The contested goods in Class 1 are essentially chemical products consisting of a type of plastic, i.e. polyurethanes, substances used in plastics manufacture, coatings and cross-linkings made from polyurethanes, or other artificial substances such as synthetic resins and adhesives for various industry applications.

The contested goods in Class 17 are insulating materials, plastics, and sealing compounds for use in manufacture.

On the basis of the above-mentioned criteria, the Opposition Division is of the view that none of the contested goods have any common links with the goods and services covered by the earlier marks in Classes 9, 11, 14 and 35.

The opponent’s goods in Class 9 are apparatus and instruments for various purposes, e.g. for scientific, nautical, surveying, photographic use, or for regulating or controlling electricity, recording sound or images, fire-extinguishing, calculating, data processing etc. In Class 11 the earlier signs cover apparatus for various household or industry purposes. These goods are all finished products for well-defined specific purposes targeting directly the end user of the product.

While it may be that plastic or synthetic products in Classes 1 and 17 will be used, as raw or semi-finished material, in the manufacture of apparatus or equipment in Classes 9 and 11, they cannot be regarded as complementary on the ground that the raw materials are intended to be turned into the finished products (see, to that effect, judgment of 09/04/2014, T 288/12, Zytel, EU:T:2014:196, § 39. In such cases the raw or semi-finished products in Classes 1 and 17 would be transformed and would become an integral part of the equipment; the raw and semi-finished goods are furthermore aimed at the manufacturer of the apparatus or equipment and not the final consumer of the end product.

The contested goods have even less in common with the opponent’s goods in class 14, e.g. precious metals, stones and jewellery, which are destined at the jewellery industry. The producers are not the same, nor are the distribution channels, and the goods do not have the same purpose.

The contested goods are even less similar to the opponent’s services in class 35. By their nature, goods are generally dissimilar to services. This is because goods are articles of trade, wares or merchandise and their sale usually entails the transfer in title of something physical. Services, on the other hand, consist of the provision of intangible activities. There is no complementary connection between the advertising, commercial or industrial management, import, export, retail services of the opponent and the applicant’s goods, moreover the purposes and the target public are fundamentally different.

Therefore, the contested goods are dissimilar to all of the opponent’s goods and services in classes 9, 11, 14 and 35.

2. 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 goods and 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 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

Richard THEWLIS

Marianna KONDAS

Benoit VLEMINCQ

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.