OPPOSITION No B 2 941 279

Baylor University, P.O. Box 97034, Waco, Texas 76798-7034, United States of America (opponent), represented by Maucher Jenkins, 26 Caxton Street, London SW1H 0RJ, United Kingdom (professional representative)

a g a i n s t

Oscar Sagas Rica, Santa Juana de Arco 29, 08032 Barcelona, Spain (applicant).

On 15/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 941 279 is rejected in its entirety.

2. The opponent bears the costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 should 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 16 694 317 for the figurative sign . The opposition is based on European Union trade mark registration No 14 290 241 for the word mark ‘BAYLOR’. 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:

Class 9: Audio and video cassettes; floppy discs bearing computer software; CD RAMS; CD ROM’S DVDs; DVD-ROMs; CDs; published material in digital format; optical, electronic and magnetic data storage devices bearing recorded information; digital and analogue media for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting, retrieving and reproducing downloadable music, downloadable sounds, downloadable images, downloadable text; downloadable sounds, downloadable images, downloadable text and information provided by telecommunications networks, by online delivery and by way of the Internet and the world wide web; computer programs; computer software for teaching, instructional and educational purposes; downloadable electronic publications; electronic databases; apparatus and instruments, all for recording and reproducing sound or video; all for recording and reproducing sound or video; blank and pre-recorded sound and video recording materials; information stored in electronic, digital and magnetic form; downloadable publications in electronic form, supplied on-line from databases for from facilities provided on the Internet; downloadable software and applications; software applications delivered online through a web-browser or as a downloadable application or application delivered to any computing device including desktop, laptop and tablet computers as well as mobile devices; parts and fittings for the aforesaid goods.

Class 16: Paper; printed publications; printed matter; periodical publications, magazines, brochures, programmes, books, booklets, catalogues, guides and pamphlets; stationery; instructional and teaching material; writing instruments, crayons, pens, pencils, pencil sharpeners; calendars, bumper stickers, decalcomanias, stickers; posters; ring binders, folders, notebooks and note pads; writing pads and wirebound writing pads; newsletters; materials for wrapping and packaging.

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; steel wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; dishes, glasses, mugs, cups, tumblers.

Class 25: Clothing, footwear, headgear; shirts, dress shirts, night shirts, sweatshirts, sweaters, sweatpants, jerseys, t-shirts, ties, hats, caps, shorts, pants, boxer shorts, jackets, warm-ups, skirts, socks.

Class 35: Business administration; business management; human resources and personnel administration and management; administering study abroad programmes for college and university students; management of study abroad programmes for college and university students; human resources and personnel services in the field of education; recruitment and placement of teachers at colleges, universities and international schools.

Class 38: Internet broadcasting services; streaming of recorded audio material on the Internet; Streaming of video content via a global computer network; Computer aided transmission of messages and images; Providing access to databases; Radio broadcasting; Internet radio broadcasting.

Class 41: Teaching, educational research, instruction and education; teaching, educational research, instruction and education by means of a computer database; academic services provided by universities; university services; conferral of degrees; arranging and conducting seminars, symposiums, conferences and congresses; conducting correspondence courses; teaching, lecturing and tutorial services; educational and training services; providing information concerning education; educational examinations; organisation of exhibitions for educational purposes; lending libraries and library services; rental of educational apparatus and instruments; education services; instruction services; physical education; publication of printed material and written works; providing and operation of sporting and recreation facilities; publication of books; publication of texts; teaching; Providing information concerning all fields of education and collegiate life; Providing a website featuring information concerning all fields of education and collegiate life; Providing a website featuring non-downloadable videos relating to all fields of education and collegiate life; Entertainment services, namely, providing non-downloadable playback of videos and audio material via the Internet; Educational services, namely, providing non-downloadable playback of videos and audio materials via the Internet; Publishing of electronic publications; Publication of electronic magazines; information and advisory services all relating to the aforesaid; all provided by a university.

Class 42: Providing a website featuring information and links in the fields of technology and computers; Computer database services namely, the retrieval, provision and display of information; Hosting of digital content on the Internet.

The contested goods are the following:

Class 14: Watches; Timing clocks; Parts for clocks; Jewellery, clocks and watches; Chronographs for use as watches; Cases for watches [presentation]; Watch straps made of metal or leather or plastic; Watches with the function of wireless communication; Watches containing a game function; Watches incorporating a memory function; Electronically operated movements for watches; Wristwatches with GPS apparatus; Cases [fitted] for clocks; Digital clocks incorporating radios; Clock cases; Stands for clocks; Automobile clocks.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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 Class 14

The contested goods include jewellery, different kinds of clocks and watches, cases for watches and clocks, and components for watches and clocks. Jewels are for personal adornment, and watches and clocks are horological instruments used for measuring time and showing the time.

The opponent’s goods in Class 9 are essentially data storage devices (blank, pre-recorded or recorded media); recorded content; media for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting, retrieving and reproducing downloadable sounds, texts and images; downloadable sounds, images, texts, publications; software; apparatus and instruments for recording and reproducing sound or video; parts and fittings for all the aforesaid goods.

The opponent argues that the contested watches and clocks are designed to communicate, entertain and store data and that therefore they are similar to the opponent’s data storage devices; media for recording and reproducing sounds and images; downloadable sounds, images and texts; software and software applications. The Opposition Division does not share this view and considers that the natures and main purposes of these goods are different. Although the contested goods include sophisticated watches incorporating functions such as a memory function, a games function, GPS and wireless communication, the main purpose of the applicant’s goods is to measure time and show the time, whereas the opponent’s goods are media for storing, recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting, retrieving and reproducing data and recorded content. Although the opponent’s goods include software applications that can be used with all sorts of computing devices and mobile devices, including smart watches, the contested goods do not include smart watches, which belong in Class 9, but are time-keeping, chronometric instruments. Furthermore, these goods do not have the same manufacturers or distribution channels and they are neither in competition nor complementary.

The contested goods are also dissimilar to the opponent’s remaining goods, which are mainly paper, printed matter, stationery, instructional and teaching materials, writing instruments, stickers, and material for wrapping and packaging in Class 16; small, hand-operated utensils and apparatus for household and kitchen use as well as toilet utensils, glassware and articles of porcelain in Class 21; and clothing, footwear and headgear in Class 25. These goods differ from the contested goods, since they do not have the same nature, purpose, method of use, manufacturers or distribution channels, and they are neither in competition nor complementary. According to the opponent, the contested cases for clocks and watches are household goods that are similar to the opponent’s household containers in Class 21 or to its materials for wrapping and packaging in Class 16. The Opposition Division does not share this view and considers that these goods are not similar, since they clearly differ in their natures, purposes, manufacturers and distribution channels. Cases for clocks and watches are for storing watches and clocks and keeping them safe, and they are not considered to be household containers, such as plastic bowls, containers for food or wrapping materials.

Finally, the contested goods are dissimilar to the opponent’s services, which are essentially business services (business management and business administration) in Class 35; telecommunication services (internet and radio broadcasting, streaming, computer-aided transmission of messages and images and providing access to databases) in Class 38; education services, publishing, sporting activities and entertainment services, all provided by a university in Class 41; and IT services (providing a website, computer database services and hosting content on the internet) in Class 42.

By their nature, goods are dissimilar to services. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title or something physical. Services, on the other hand, consist in the provision of intangible activities. From these divergent natures, it follows that the methods of use of goods and services are inherently dissimilar.

In the present case, the contested goods in Class 14 and the opponent’s services in Classes 35, 38, 41 and 42 do not have the same natures, purposes, methods of use, manufacturers/providers or distribution channels. Furthermore, they are not complementary. The mere fact that the contested watches may be used to communicate or to transmit data is not sufficient to render them similar to the opponent’s services in Class 38, which are specific communication services (broadcasting, streaming, providing access to databases and computer-aided transmission of messages and images). Furthermore, the primary function of watches in Class 14 is to measure time and show the time, not to allow communication between people. The mere fact that the contested goods include watches with a games function does not render them similar to the opponent’s services in Class 41, which include educational services and specific entertainment services provided by a university (i.e. providing non-downloadable playback of videos and audio material via the Internet). Furthermore, these goods and services do not have the same distribution channels and they are not complementary in the sense that one is indispensable for the use of the other.

Therefore, the contested goods in Class 14 are not similar to the opponent’s goods and services in Classes 9, 16, 21, 25, 35, 38, 41 and 42.

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Boyana NAYDENOVA

Frédérique SULPICE

Steve HAUSER

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.