OPPOSITION Nо B 2 958 836

Impress GmbH, Heinz-Nixdorf-Str. 21, 41179 Mönchengladbach, Germany (opponent), represented by Remmertz Legal, Rindermarkt 6, 80331 München, Germany (professional representative)

against

MS Printing Solutions Srl, Via Bergamo 1910, 21042 Caronno Pertusella (va), Italy (applicant), represented by Bugnion S.P.A., Viale Lancetti, 17, 20158 Milano, Italy (professional representative).

 

On 14/08/2020, the Opposition Division takes the following

 

 

DECISION:

 

1. Opposition No B 2 958 836 is rejected in its entirety.

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

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 16 723 017 'IMPRES' (word mark). The opposition is based on European Union trade mark registration No 1 605 427, (figurative mark) and on German trade mark registration No 30 092 171 'IMPRESS-MEDIA' (word mark). The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION – GERMAN TRADE MARK REGISTRATION No 30 092 171

 

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, the notice of opposition was not accompanied by any evidence as regards German trade mark No 30 092 171 on which the opposition is based.

 

On 11/10/2017 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. Due to an extension of the cooling period followed by an extension of the deadline for the opponent to provide the evidence in support of the earlier rights, the deadline to submit such evidence expired on 16/02/2020.

The opponent submitted observations on 12/02/2020 but they did not include any evidence concerning the earlier German trade mark.

Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office.

 

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded as far as it is based on the opponent's German trade mark.

The assessment proceeds on the basis of the opponent’s European Union trade mark registration.

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.

a) The goods and services

 

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

Class 16: Printed matter (semi-manufactures).

Class 35: Advertising; marketing and sale of printed matter (semi-manufactures) via direct sales channels and via the Internet.

The contested goods are the following:

Class 2: Bulk packaged ink for digitally controlled ink jet printers controlled by computers and for sale in non-cartridge, bulk containers to industrial and commercial customers for such printers for printing on wide format textiles and fabric materials.

Class 7: Printers using bulk, non-cartridge supplied ink for wide format textile and fabric printing, namely, digitally controlled ink jet printers, controlled by computers for sale to industrial and commercial customers for printing on wide format textile and fabric materials.

Class 9: Software for controlling printers using bulk, non-cartridge supplied ink for wide format textile and fabric printing.

The term ‘namely’, used in the applicant’s list of goods in Class 7 is exclusive and restricts the scope of protection only to the goods specifically listed (digitally controlled ink jet printers, controlled by computers for sale to industrial and commercial customers for printing on wide format textile and fabric materials).

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 Classes 2, 7 and 9

The similarity between the goods and services concerns a matter of law which has to be ruled on by the Office, if need be on its own motion, since it is necessary to resolve that matter in order to ensure a correct application of Article 8(1)(b) EUTMR (15/07/2015, T-24/13, CACTUS OF PEACE CACTUS DE LA PAZ / CACTUS, EU:T:2015:494, § 23 and the case-law cited). However, the comparison of goods should not be speculated on or extensively investigated ex officio (09/02/2011, T-222/09, Alpharen, EU:T:2011:36, § 31-32). This follows from Article 95(1) EUTMR, according to which, in inter-partes proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

Therefore, the submissions of the parties to provide specific and substantiated information may have a decisive impact on the outcome of a case, especially if the goods are not everyday mass consumption goods but specialised goods that are aimed at a professional public. In this respect, not every relevant factor has to be evaluated the same way. There are factors that the Office is able to decide upon without any submissions from the parties, such as the nature and the purpose of the goods, whereas there are other factors, such as the producers, the distribution channels and a possible link of complementarity, which may need to be supported by evidence from the party that makes the claim of similarity between goods and, if appropriate, counter evidence from the other party (30/10/2015 – R 3045/2014-2 – ENERLIGHT / EVERLIGHT (fig.) et al., § 26).

In Class 7, the goods applied for are printers using ink in bulk and controlled by computers, for textile and fabric printing, targeting professional customers. The contested goods in Class 2 refer to ink packaged in bulk and in containers for this type of printers and the contested goods in Class 9 are software for this same type of printers.

The opponent's trademark is registered for printed matter (semi-manufactures) in Class 16. The expression suggests semi-finished printed matter not intended for end consumers but for other industries which use them in the manufacture of other goods.

In the present case, the opponent puts forward the same reasoning in support of the similarity of the contested goods in the three classes namely that these goods and the opponent's printed matter (semi-manufactures), and marketing of the same, are complementary goods and services especially on the B2B market as printed matter is produced by printers supported by accessories (ink) and software.

The opponent’s reasoning is neither clear nor convincing.

 

As regards the factor of complementarity: goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44).

Complementarity requires that the goods must be used together whereas the alleged reasoning relates to the use of the contested goods (ink, printers, printer software) in the production process of the opponent's goods. This does not amount to a link of complementarity. In addition, the fact that the specific printers are used for textile and fabric printing argues against the fact that these printers and the ink/software therefor may be used in the production of the opponent’s printed matter which refer to paper printed matter as long as they belong to Class 16 of the Nice Classification (whereas printed fabric belongs to Class 24 of the Nice classification).

Furthermore, the goods under comparison differ in their natures and purposes and are not in competition. To the Opposition Division’s knowledge, they are not produced by the same companies or distributed through the same channels and the opponent has not put forward any argument to the contrary.

It follows from the above that all the contested goods are dissimilar to the opponent's goods in Class 16.

Furthermore the contested goods are also dissimilar to the sales-related service of the same semi-finished printed matter in Class 35 from which they differ in natures, purposes, producers/providers and distribution channels in addition to not being complementary or in competition. According to the Office's practice, similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are similar, which is not the case here as previously established.

Finally, the contested goods are not similar either to the opponent's services of a promotional nature namely advertising, marketing of printed matter (semi-manufactures) via direct sales channels and via the Internet. Promotional 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 a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Advertising/marketing services are fundamentally different in nature and purpose from the manufacture of any goods, are provided by different companies and do not share the same distribution channels.

Therefore, the contested goods in the three classes are also dissimilar to the opponent's advertising, marketing services.

b) 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 all the contested goods are dissimilar to the opponent's goods and services, 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, 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

 

 

Angela di BLASIO

Catherine MEDINA

Christian STEUDTNER

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.