OPPOSITION No B 2 894 825

Tradinox, S.A., Avda. de la Cantueña, nº 7 (Parque Industrial Cantueña); 28946; Fuenlabrada (Madrid); Spain (opponent), represented by Marco & Asociados Patentes y Marcas, S.L., C/ Carpinteros, 6 Planta 2ª, Oficina 35 (Parque Empresarial Pinares Llanos), 28670 Villaviciosa de Odón (Madrid); Spain (professional representative)

a g a i n s t

Shenzhen Xiangxiaokui Trade Co. Ltd.; Rm 311 Huashen Bldg No. 1036 Aiguo Rd. Cuizhu St. Luohu Dist., Shenzhen, People’s Republic of China (applicant), represented by A.Bre.Mar. S.R.L., Via Servais 27, 10146 Torino; Italy (professional representative).

On 17/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 894 825 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 234 205 . The opposition is based on Spanish trade mark registration No 2 034 063 and Spanish trade mark registration No 2 403 172 . The opponent invoked Article 8(1)(a) and (b) EUTMR.

SUBSTANTIATION

According to Rule 19(3) EUTMIR (in the version in force at the time of commencement of the adversarial part), the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

According to Rule 98(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document.

In the present case, part of the evidence filed by the opponent is not in the language of the proceedings.

On 12/05/2017, the opponent filed, together with the notice of opposition, a renewal certificates of the Spanish trade mark registration No 2 034 063 and a printout form the official database of the Spanish trade mark registration No 2 403 172 accompanied by a translation in the language of the proceedings and containing data concerning the goods and services on which the opposition is based. However, such documents do not meet the requirements set in Rule 98(1) EUTMIR (in the version in force at the time of commencement of the adversarial part).

In this context the Opposition Division notes that the documents submitted by the opponent do not contain all the relevant data, namely parts of the opponent’s goods and services have not been translated into English (the language of the proceedings). In particular, the terms (or parts of the terms): metallic materials for ‘ferreas; tubos metalicos’ in Class 6 and ‘tornilleria' in Class 39 are not in the language of the proceedings.

According to Rule 19(4) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it concerns the above mentioned goods and services. It will continue based on the translated goods and services.

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:

Spanish trade mark registration No 2 403 172

Class 6: Common metals and their alloys; metallic construction materials; transportable metallic constructions; metal screws, metal sheets, metal flexes; cables and non-electrical metallic wire, locksmith and metallic hardware; boxes of flowers, metal products, not included in other classes; minerals.

Spanish trade mark registration No 2 034 063

Class 39: Transportation services, storage, supply and distribution of metallic construction materials, common metals and alloys, metal tubes, cables and non-electric metallic wire, metal hardware, valves and metallic profiles.

The contested goods are the following:

Class 11: Light bulbs; lamps; electric light bulbs; pocket searchlights; electric pocket torches; electric discharge tubes, for lighting; chandeliers; ceiling lights; filaments for electric lamps; lamp globes; safety lamps; miners' lamps; electric lights for Christmas trees; luminous house numbers; searchlights; flashlights [torches]; street lamps; fairy lights for festive decorations; aquarium lights.

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 goods in Class 11 are different kinds of lamps and lighting devices. These goods have a different nature and purpose from the opponent’s goods in Class 6 (small and big metal goods). They are neither complementary nor in competition. The mere fact that they might be used in combination does not automatically make them similar. Moreover, these goods are not usually produced by the same undertakings and do not have the same distribution channels or end users. Therefore, they are dissimilar.

As far as the opponent’s services in Class 39 are concerned, services of transportation, storage, supply and distribution have been generally considered not to be similar to goods. These services are provided by specialist transport companies whose business is not the manufacture and sale of those goods. As regards the nature of the goods and services, transportation and distribution services refer to a fleet of trucks or ships used to move goods from point A to point B. Storage services comprise actions and methods of storing something for future use and supply services refer to activities and resources involved to moving a product or services form supplier to customer. These services are not similar to the goods in Class 11. These goods and services are not in competition with one another. Furthermore these services are not interchangeable; neither can they be substituted for one another.

As regards the complementary nature of the goods and services, it must be pointed out that goods or services are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods or for the provision of those services lies with the same undertaking (see also to that effect Case T-85/02 Díaz v OHIM [2003] ECR II-4835, paragraph 36). However, such a close connection cannot be assumed in the present case.

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.

The EUTM applicant requested proof of use of the earlier trade marks. However, the request concerned goods in Class 11 while the earlier trade marks only cover goods and services In Classes 6 and 39 Therefore the request was rejected. In any event, the request would not have been examined considering that the opposition is not well founded under Article 8(1) EUTMR as the contested goods were found dissimilar to the earlier goods and services.

For the sake of completeness, it must also be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the goods and services are obviously not identical.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Jessica LEWIS

Arkadiusz GORNY

Ana MUÑÍZ RODRÍGUEZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been 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 Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.