OPPOSITION No B 2 671 694

Eller Montan Comp., GmbH, Mercatorstr. 131 – 133, 47051 Duisburg, Germany (opponent), represented by Loschelder, Konrad-Adenauer-Ufer 11, 50668 Köln, Germany (professional representative)

a g a i n s t

Cleverage, Via Mauro Amoruso, 96, 70124 BARI, Italy (applicant).

On 30/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 671 694 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 878 219. The opposition is based on European Union trade mark registration No 10 337 509. The opponent invoked Article 8(1)(b) EUTMR.

pottshop
Earlier trade mark	Contested sign

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 services

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

Class 35: Retailing, including via the Internet, of pharmacy goods, cosmetics and household goods, fuels and carburants, health sector goods, machines, tools and goods of metal, construction articles, DIY articles and garden articles, hobby requisites and craft supplies, electric and electronic goods, sound and data carriers, vehicle accessories, clocks and watches and jewellery, printed matter, stationery, office requisites, clothing, shoes and textile goods, toys, sporting goods, foodstuffs and beverages, tobacco goods and other luxury foods, alcohol and tobacco.

The contested services are the following:

Class 35: Commercial trading and consumer information services; Business analysis, research and information 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 commercial trading and consumer information services are essentially business support and consumer information services, such as processing orders, advisory services relating to the purchase of goods and services, arranging commercial contracts, mediation of contracts for purchase and sale of products, price comparing services or providing consumer product information. The contested business analysis, research and information services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The opponent’s services consist in bringing together, and offering for sale, a variety of goods, thus allowing consumers to conveniently satisfy different shopping needs.

The conflicting services have different nature and purpose. The commercial origin and the distribution channels of these services are also different as companies specialised in commercial administration, in business management or consumer information do not usually offer to the public their own retailing services. The opponent’s services are directed at the public at large and the contested services at business customers with specific professional knowledge or expertise. These services are not complementary to the extent that they are not essential for each other. Moreover, they are neither in competition. Therefore, these services are dissimilar.

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 services are 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. 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

Chantal VAN RIEL

Benoit VLEMINCQ

Begoña URIARTE VALIENTE

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.