OPPOSITION Nо B 3 097 993

 

Ergomobil, S.L., C/ Luis I, 31-33 - Nave 5, 28031 Madrid, Spain (opponent), represented by Consiangar, S.L., Calle Albasanz, 72-1º 1, 28037 Madrid, Spain (professional representative)

a g a i n s t

Löffler GmbH, Rosenstraße 8, 91244 Reichenschwand, Germany (applicant), represented by V. Bezold & Partner, Akademiestr. 7, 80799 München, Germany (professional representative).

On 10/02/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 097 993 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 (all in Class 20) of European Union trade mark application No 18 082 719 ‘ERGOMOBIL’ (word mark). The opposition is based on Spanish trade mark registration No 2 180 845, ‘ERGOMOBIL, S.L’ (word mark). The opponent invoked  Article 8(1)(b) EUTMR.

 

 

PROOF OF USE

 

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the invoked, which is the best light in which the opponent’s case can be considered.

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 services on which the opposition is based are the following:

 

Class 39: Transport; packaging and storage of furniture and office equipment.

The contested goods are the following:

 

Class 20: Furniture; parts for furniture; accessories for 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 earlier mark is registered for services of transport (in general), which refer, for example, to a fleet of lorries or ships used for moving goods or persons from A to B. Therefore, these services are provided by specialist transport companies whose business is not the manufacture and sale of the goods that are transported. Also, the earlier mark covers packaging and storage of furniture and office equipment which refer to services offered to thirds whereby a company’s merchandise is packed and kept in a particular place for a fee. For example, storing goods for thirds means putting them in a warehouse, i.e. an installation specially designed for keeping goods in good condition so that they can be released later when the need arises. These services are provided by specialist companies, whose business it is to pack and/or store goods for thirds but not to manufacture or sell such goods.

As regards all the contested goods in Class 20, they are pieces of furniture, parts and accessories for furniture.

Based on the above considerations, it appears that the conflicting goods and services have nothing in common as they differ in their natures (the contested ones are tangible while the opponents are not), purposes (the contested goods are intended to be used in a house for decorative or functional purposes - to furnish- whereas the services in question are aimed at thirds who wish to have purchase transport services or to have their furniture and office equipment packed and stored), as well as distribution channels and providers. Furthermore, they are not complementary to each other, contrary to what the opponent alleges. In that regard, it must be noted that according to case-law, goods and 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 and for the provision of the services in question lies with the same undertaking.

In the case at hand, even if the contested goods in Class 20 can be the object of the services of ‘packaging and storage of furniture’ covered by the earlier mark, such circumstance is not sufficient for them to be considered complementary. Indeed, even if the manufacture and sale of the goods may also involve their packaging and storage or their distribution, such activities are performed by the manufacturer of the goods in its own interest, i.e. to package, store and transport its own goods, but not as a commercial activity intended to be offered and sold as a service for thirds. So, the fact that a manufacturer of the goods in Class 20 packages, stores and transports its own goods must be considered to be subsidiary to the manufacturer’s main business, i.e. the manufacturing of the goods in Class 20, and not services which are offered separately to thirds from that main business (see, to that effect, 22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298; and 07/02/2006, T-202/03, Comp USA, EU:T:2006:44, § 46 and 47). As a consequence, the goods and services at issue do not coincide in public either and by definition, goods and services intended for different publics cannot be complementary, as confirmed by settled case-law (see judgments of 22 January 2009, T-316/07, ‘easyhotel’, paras. 57 and 58; and of 22 June 2011, T-76/09, ‘Farma Mundi Farmaceuticos Mundi’, para. 30).

The fact that the goods and services at issue might ultimately coincide in the sense that the consumer of the goods in Class 20 may at some point also look for a company’s services in Class 39 to transport package and store these goods is not conclusive either. Any good can be transported, packaged and stored but the services in Class 39 merely refer to the services whereby a company’s or any other person’s goods are transported, packed and kept in a particular place for a fee. Those services are not similar to any kind of goods, including any of the goods that may be transported, packed or stored (07/02/2006, T-202/03, Comp USA, EU:T:2006:44; 22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 32).

Finally, contrary to the opponent´s claim ‘the services of the opposing registration are in competition with those goods offered by the challenged trademark’, it should be pointed out that the goods and services compared are not in competition with each other since they are neither interchangeable nor substitutable for one another.

The opponent refers to previous judgments of the Court, namely 11/05/2011, T‑74/10, Flaco, EU:T:2011:207, 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25 and 04/02/2013, T-504/11, Dignitude, EU:T:2013:57. However, these cases are not relevant to the assessment of likelihood of confusion in the present case, as the factual circumstances and the goods and services involved in these cases differ entirely from those in the present case.

Therefore, the contested goods in Class 20 are found dissimilar to all of the services of the earlier mark.

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 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.

 

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

 

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

 

 

Martina GALLE

Gonzalo BILBAO TEJADA

Erkki MÜNTER

 

 

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.