OPPOSITION Nо B 3 111 283

 

Hewlett-Packard Development Company, L.P., 11445 Compaq Center Drive West, 77070 Houston, United States of America (opponent), represented by Cms Hasche Sigle Partnerschaft Von Rechtsanwälten Und Steuerberatern Mbb, Kranhaus 1, Im Zollhafen 18, 50678 Köln, Germany (professional representative) 

 

a g a i n s t

 

Holding Topsec, 19 Rue De La Baignade, 94400 Vitry-sur-seine, France (applicant), represented by Mark & Law, 7, Rue Des Aulnes - Bâtiment B, 69410 Champagne Au Mont D'or, France (professional representative).

On 03/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 111 283 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 and services of European Union trade mark application No 18 117 003 FITSTATION (word mark). The opposition is based on European Union trade mark registration No 17 209 561 for the word mark ‘FITSTATION’ and European Union trade mark registration No 17 214 578 (figurative 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 and services

 

The goods covered by the European Union trade mark registrations No 17 209 561 and No 17 214 578, on which the opposition is based are the following:

Class 9: Computer software for use in three dimensional (3D) scanning and printing of objects; computer software for three dimensional (3D) scanning and imaging of body parts for use in custom manufacturing of footwear, clothing, and headwear; computer aided design (CAD) software for engineering and manufacturing; printing and imaging software, namely, computer software for the three-dimensional scanning of objects, editing of such images, and operating and managing three dimensional printers that print such images; imaging hardware, namely, three dimensional (3D) scanners and three-dimensional (3D) capture platforms; computer software for 3D designing, 3D printing and 3D custom manufacturing; computer software platforms for 3D designing, 3D printing and 3D custom manufacturing.

The contested goods and services are the following:

Class 3: Soaps; Shampoo; Liquid soaps, namely shower gels; Toiletries; Deodorants for personal use [perfumery]; Skin-moisturising milk for toilet purposes; Cleansing milk for toilet purposes; Bar soap; Antiperspirants [toiletries]; Antiperspirant soap; Deodorant soap; Talcum powder, for toilet use; Cotton sticks for cosmetic purposes; Cleaning preparations impregnated into pads; Pre-moistened or impregnated cleansing wipes, tissues and pads; Disposable wipes impregnated with purifying chemical compositions or preparations, for personal hygiene.

Class 6: Padlocks; Padlocks of metal.

Class 7: Automatic vending machines; Vending machines (Counter operated -).

Class 18: Casual bags; Sport bags; holdalls for sports clothing; Sports packs; Travelling bags; Vanity cases, not fitted; Travel cases.

Class 21: Bottles, Insulating flasks, Refrigerating bottles; Reusable stainless steel and plastic water bottles; Water bottles for bicycles; Neoprene zippered bottle holders; Drinking vessels; Flasks, pocket flasks, aluminium bottles [flasks], metal beverage cans, travel flasks.

Class 24: Towels of textile; Turkish towel; Microfibre tissues for absorbing moisture; Terry face towels; Bath towels, Hooded towels; Bath linen.

Class 25: Sportswear and sports shoes; Tee-shirts, Leggings, Shorts, Vest tops, Jackets [clothing], Leotards, Sweatsuits, jogging pants; Socks; Trainers, sports shoes, dance shoes; Ankle socks, tap shoes, tennis shoes, training shoes; Caps [headwear], Headbands for sports; Moisture-wicking sports clothing; Padded clothing for sports; Brassieres for sports; women's athletic tops with built-in bras.

Class 28: Gymnastic and sporting articles; Straps for fitness activities; Yoga straps; Chest expanders [exercisers]; Bar-bells; Leg weights [sports articles]; Gaming balls; Swiss balls; Hula hoops, Sling shots [sports articles]; Antislip bodybuilding gloves; Protective pads for sports; Elbow guards, knee guards and shin guards, Throat protectors, Hand wraps, Wrist pads and guards [sports articles]; Paddings (Protective -) [parts of sports suits]; Supporters (Men's athletic -) [sports articles]; Rosin used by athletes; Roller skates; In-line roller skates; Skateboards; Punching bags for sports; Stepper machines; Exercise benches and bars; Gymnastic articles; Gymnastic articles.

Class 35: Retailing, wholesaling, online retailing via internet merchant sites relating to merchandise, namely flasks, drinking vessels, padlocks for lockers, bathroom towels, bathroom linen, soaps, shower gels, shampoo, wipes, sports bags, travelling sets [leather goods], sports clothing and footwear, gymnastic and sports articles, barbells, bodybuilding gloves, fitness straps, exercise balls, hoops, jump ropes; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely drinking flasks, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely Drinkware, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely Padlocks for lockers, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely Bathroom towels, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely Bath linen, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely Soaps, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely shower gel, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely Shampoos, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely Towelette products, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely Bags for sports, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely Travel accessories (leather goods), allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely Sports clothing and footwear, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely Gymnastic and sporting articles, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely Dumb-bells, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely Bodybuilding gloves, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely Fitness straps, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely swiss balls, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely hoops, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; The bringing together for the benefit of others, of a variety of goods (excluding the transport thereof), namely jump ropes, allowing consumers to see them, choose them, buy them conveniently with information and advice in vending machines, exhibition and sales shops, in a general catalogue, a website or other electronic media; Presentation and demonstration of goods and services for promotional or advertising purposes; Consumers (Commercial information and advice for -) [consumer advice shop]; Outsourcing services [business assistance]; Presentation of goods on communication media for retail purposes and for online sale; Sales promotion for others; Import-export agencies; Subscriptions for others to electronic or non-electronic publications relating to promotions and loyalty programmes; Rental of vending machines.

Class 37: Repair or maintenance of automatic vending machines and provision of information relating thereto.

Class 39: Distribution [delivery] of products namely: flasks, drinking vessels, padlocks for lockers, bathroom towels, bath linens, Soaps, shower gel, Shampoo, wipes, Bags for sports, Travelling sets (leatherware), Sports clothing and footwear, gymnastic and sports articles, barbells, bodybuilding gloves, fitness straps, exercise balls, hoops, jump ropes.

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.

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 parties’ 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 goods and services specifically listed.

The opponent’s goods in Class 9 comprise a wide range of highly specialised software and hardware related to the three dimensional scanning and printing of objects, body parts and image editing. These products are generally developed and provided by specific IT companies in the field of 3D image acquisition and processing.

Conversely, the contested goods and services comprise a broad range of specific goods and services which can be summarised as follow: (i) cosmetic and body care preparations in Class 3 (ii) padlocks in Class 6 (iii) vending machines in Class 7 (iv) different bags in Class 18 (v) bottles and accessories thereof in Class 21 (vi) towels in Class 24 (vii) clothing, footwear and headgear in Class 25 (viii) sporting articles in Class 28 (ix) a wide range of retailing and wholesaling services in relation to most of the goods summarised above and also consumers (commercial information and advice for -) [consumer advice shop]; outsourcing services [business assistance]; presentation of goods on communication media for retail purposes and for online sale; sales promotion for others; import-export agencies; subscriptions for others to electronic or non-electronic publications relating to promotions and loyalty programmes; rental of vending machines in Class 35 (x) repair and maintenance of automatic vending machines and related services in Class 37 and (xi) distribution of several goods listed above e.g. towels, cosmetics, clothing and gymnastic articles in Class 39.

These contested goods and services do not have anything in common with any of the opponent’s goods. In particular, they have clearly different nature, purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

In this regard, it must be stressed that the opponent’s computer software for three dimensional (3D) scanning and imaging of body parts for use in custom manufacturing of footwear, clothing, and headwear are clearly dissimilar from the applicant’s goods in Class 25 since companies active in the field of clothing do not develop and sells to end users 3D software for the custom manufacturing of footwear, clothing, and headwear. These goods have clearly different nature, purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Furthermore, it is noted that the opponent did not argued on the contrary.

 

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.

 

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

 

 

María Clara IBÁÑEZ FIORILLO

Aldo BLASI

Francesca CANGERI

 

 

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.