OPPOSITION No B 2 599 937

Pro Management, SAS, 86 Avenue Victor Cresson, 92130 ISSY Les Moulineaux, France (opponent), represented by Hirsch & Associés, 137 rue de l'Université, 75007 Paris, France (professional representative)

a g a i n s t

Q-Systems (UK) Ltd, Bradley Hosue Locks Hill, Rochford Essex SS4 1BB, United Kingdom (applicant).

On 11/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 599 937 is upheld for all the contested goods.

2. European Union trade mark application No 14 417 208 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 417 208. The opposition is based on, inter alia, French trade mark registration No 144 136 256. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

Although the specific conditions under Articles 8(1)(a) and 8(1)(b) EUTMR differ, they are related.

Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Office will still examine the case under Article 8(1)(b) EUTMR that requires at least similarity between signs and goods/services and likelihood of confusion.

Likewise, an opposition based only on Article 8(1)(b) EUTMR that meets the requirements of Article 8(1)(a) EUTMR will be dealt with under the latter provision without any examination under Article 8(1)(b) EUTMR.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(a) and (b) EUTMR

Double identity means that both of the signs concerned and the goods/services in question are identical. If it is established, the opposition is upheld, because the protection conferred by Article 8(1)(a) EUTMR is absolute.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 144 136 256.

1. The goods

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

Class 9: Compact discs, DVD and other digital recording media; cash registers; calculating machines; data processing equipment; computers; electronic ticket printing machine; software (recorded computer programs) enabling the management of cloakrooms.

Class 16: Printed matter; stationery; typewriters and office requisites (except furniture); printing type; paper; cardboard; boxes of cardboard or paper; prospectuses; pamphlets; writing instruments.

The contested goods are the following:

Class 9: Ticket dispensers; automated ticket printing apparatus; automatic ticket dispensing machines.

Class 16: Tickets; entry tickets; printed tickets.

Contested goods in Class 9

The contested ticket dispensers; automated ticket printing apparatus and automatic ticket dispensing machines are essentially the same type of machines and apparatus as the opponent’s electronic ticket printing machine because they all consist of machines or apparatus for providing tickets. Therefore, these categories of goods cannot be clearly separated and they are considered identical.

Contested goods in Class 16

The contested tickets, entry tickets and printed tickets are included in the broad category of the opponent’s printed matter. Therefore, they are identical.

2. The signs

Q-ROBE	Q-Robe
Earlier trade mark	Contested sign

Both the earlier trade mark and the contested sign consist exclusively of the word element ‘Q-ROBE’. Since they are word marks, the type of case used for representing each of them is irrelevant for their comparison. Consequently, they are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and the contested goods are identical to the opponent’s goods. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR.

Consequently, the opposition is well founded on the basis of the opponent’s French trade mark registration No 144 136 256. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier French trade mark registration No 144 136 256 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Deirdre QUINN

Patricia LOPEZ FERNANDEZ DE CORRES

Gueorgui IVANOV

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.