OPPOSITION Nо B 3 090 666

 

Sky Paper S.L.U., c/ Tramuntana, 24-28 - Sector C -Polígono Industrial Llevant - Polinyà., 08213 Barcelona, Spain (opponent), represented by Durán Cuevas, S.L.P., Paseo de Gracia, 110, 1°, 1ª, 08008 Barcelona, Spain (professional representative) 

 

a g a i n s t

 

Softbox Systems Limited, 1 Ridge Way, Long Crendon HP18 9BF, United Kingdom (applicant), represented by Humphrey-Evans Intellectual Property Services Ltd., 1 Hawkes Close, Wokingham RG41 2SZ, United Kingdom (professional representative).

On 07/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

1. Opposition No B 3 090 666 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 18 028 013  (figurative mark). The opposition is based on Spanish trade mark registration No 2 576 480, ‘SKY PAPER’ (word mark). 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.

 

 

a) The goods

 

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

 

Class 16: Napkins, 1m x 1m single tablecloths rolls, of paper.

 

The contested goods are the following:

 

Class 11: Reusable, re-freezable ice packs / phase change packs for shipping and packaging use, namely latent heat storage liquid-to-solid and solid-to-liquid phase change materials for temperature control.

Class 16: Packaging materials, reusable or non-reusable, namely: containers, boxes, cartons, box inserts, and sheet primarily made of paperboard, corrugated paperboard and/or plastics; carrier bags; bags and sacks for packaging, wrapping or storage, consisting of plastic materials or mainly containing plastic materials; cardboard sections, tube sections, flat sections and sleeves for use in storage systems, packaging, storage and wrapping; all the above for use in the field of cold chain packaging, transport and storage.

Class 20: Large-scale packaging, reusable or non-reusable, namely: containers, boxes, cartons, box inserts, and sheet primarily made of plastics; transport containers made of plastics, all having thermal insulating properties; cases and containers of plastics; containers for transport not of metal; non-metallic reusable insulated lightweight shipping containers for food and other temperature sensitive products; all the above for use in the field of cold chain packaging, transport and storage.

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

 

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

 

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

 

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 11, 16 and 20

The contested goods in these three Classes, which encompass a variety of packaging and storage articles, are dissimilar to all the goods for which the earlier mark is registered, since they do not have any relevant points of contact that could justify finding a level of similarity between them.

Contrary to the opponent’s arguments, as regards, in particular the contested goods in Class 16, the goods have a different nature. This latter refers to the essential qualities or characteristics by which the goods or services are recognized. Nature often corresponds to the particular type or sort of good or services or the specific category to which this good or service belongs and which is usually used to define it. The fact that the goods at issue are made of similar materials such as paper in the case of the opponent’s goods and paperboard or carboard in the case of the contested goods, is not per se an indicator of the same nature, since in the present case the goods at issue cannot be considered as included in a general broad category which encompasses both kinds of goods.

Moreover, the contested goods are intended for use in the field of cold chain packaging, transport and storage, while the opponent’s goods are normally used for wiping the mouth and for covering the lap to protect clothing from food stains (napkins) and for the protection of tables (tablecloths rolls). Therefore, these goods have a different purpose and method of use compared to the opponent’s goods.

Since the contested goods are intended for use in the field of cold chain packaging, transport and storage, they will be produced by specialist companies and it is not very likely that they coincide in the producers of the opponent’s goods. For the same reasons, these goods do not coincide in distribution channels. Furthermore, they are neither in competition, nor are they complementary.

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 the goods 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, 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

 

 

Vít MAHELKA

Victoria DAFAUCE MENÉNDEZ

Chantal VAN RIEL

 

 

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.