OPPOSITION No B 3 032 631

Billiet Trading Company-B.T.C. NV, Bevrijdingslaan 13-15, 8700 Tielt, Belgium (opponent), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative)

a g a i n s t

Pavel Boiarkin, Sirenevaia 74, 440062 Penza, Russian Federation (applicant), represented by Tarpine Ltd., A. P. Kavoliuko g. 24-152, 04328 Vilnius, Lithuania (professional representative).

On 29/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 032 631 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 622 912 , namely against all the services in Class 35. The opposition is based on international trade mark registration No 1 075 460 designating Austria, Germany, Spain, France, Italy and Portugal, European Union trade mark registration No 13 722 641 and Benelux trade mark registration No 797 591 . The opponent invoked Article 8(1)(b) EUTMR.

1. The goods and services

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

International trade mark registration No 1 075 460

Class 8: Hand tools and implements (hand-operated); cutlery; side arms; razors.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

European Union trade mark registration No 13 722 641

Class 8: Hand tools and implements (hand-operated); Cutlery; Edged and blunt weapons; Razors.

Class 28: Games and playthings; Gymnastic and sporting articles not included in other classes.

Benelux trade mark registration No 797 591

Class 8: Hand tools and implements (hand-operated); cutlery; side arms; razors.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 24: Textiles and substitutes for textiles as far as not included in other classes; blankets; table cloths.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

The contested services, following a limitation made by the applicant, are the following:

Class 35: Promotion services; Product demonstrations and product display services; Presentation of goods on communication media, for retail purposes; Advertising. All aforementioned services only in relation to furniture.

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 services are a variety of services that target professional undertakings, mainly related to the promotion of goods and/or services. Promotion, advertising and marketing services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. The opponent’s goods are products in the fields of gaming, textiles, furniture, jewellery, household utensils, gymnastics, etc. Therefore, the contested services and the opponent’s goods have nothing relevant in common. They have different natures and purposes, do not have the same distribution channels, do not target the same public, are not in competition and are not offered by the same companies. Unlike the Opponent claims they also are not in any way complementary.

Therefore, the contested promotion services; product demonstrations and product display services; presentation of goods on communication media, for retail purposes; advertising, all aforementioned services only in relation to furniture are dissimilar to all the opponent’s goods.

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 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

Dorothée SCHLIEPHAKE

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Volker MENSING

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.