2025 AD | Decision 2712787 – Trademarkers Legal Blog

OPPOSITION No B 2 712 787

Autodistribution, 22 Avenue Aristide Briand, 94110 Arcueil, France (opponent), represented by Cabinet Cande-Blanchard-Ducamp, Boulevard Malesherbes, 131, 75017 Paris, France (professional representative)

a g a i n s t

Continental Reifen Deutschland GmbH, Vahrenwalder Str. 9, 30165 Hannover, Germany (applicant), represented by Göhmann Rechtsanwälte Abogados Advokat Steuerberater Partnerschaft Mbb, Landschaftstraße 6, 30159 Hannover, Germany (professional representative).

On 25/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 712 787 is upheld for all the contested goods and services, namely:

Class 12: Vehicles; Apparatus for locomotion by land, air or water; Parts and fittings for vehicles for locomotion by land and/or water; Motors for land vehicles; Engine actuators (throttle valves, idle-speed controllers, linear actuators, air regulating valves, air damper actuators, exhaust gas recirculation valves); Combination display instruments, cockpits, instrument panels, central consoles; Tyres, inner tubes for tyres, wheels, wheel rims, treads for retreading tyres, hub caps, tyre flaps, materials and kits for the repair of tyres and inner tubes, included in class 12; Valves for vehicle tires [tyres]; Chassis and parts therefor (included in class 12); Regulated and non-regulated chassis; Electronic, hydraulic, electromechanical, electrohydraulic and mechanical brakes for vehicles; Parts and fittings for electronic, hydraulic, electromechanical, electrohydraulic and mechanical brakes for vehicles; Brake cylinders, brake segments, brake calipers, brake discs, brake pads, brake hoses; Mechanical and hydraulic control and regulating circuits, included in class 12; Regulated and non-regulated electromechanical and electrohydraulic steering mechanisms and parts therefor; Hydraulic steering aids, steering columns, steering gears; Electric, electronic and mechanical actuators, transmission shafts and electric motors, other than for aircraft; Safety devices for motor vehicles, included in class 12; Air bags, belt tensioners and parts and fittings therefor, included in class 12; Machine coupling and transmission components, including clutches for land vehicles; Active and passive, regulated and unregulated dampers and springs for vehicles, wheels and parts therefor, in particular pneumatic springs or gas springs; Air supply units for pneumatic spring systems; Shock absorbers and suspension struts for vehicles; Shock absorbing springs for vehicles, vehicle suspension springs; Vibration dampers and torsional vibration dampers for vehicles, being other than components for land vehicle motors and engines; Vehicle motors and engines, steering apparatus, vehicle cabins and driver seats; Hydro-bearings being components of vehicles, included in class 12; Axles and axle modules, axle boots, membranes; drive belts, Driving belts, as far as included in class 12; Cooling, heating, braking, fuel, charge air, oil and hydraulic hoses being components and fittings for vehicles, included in class 12; Interior panels for vehicles; Airbag coverings; Dashboard linings; Upholstery for vehicles; Car seats; Cigar lighters for automobiles; Cockpit cross-members; Driver workstations, drivers' cabs; Ventilation nozzles, air control elements and air lines; Windscreen and headlight washing systems for motor vehicles, and containers, nozzles, hoses, hose couplings, pumps, heating devices and valves therefor; Windscreen and headlight cleaning systems; Window lifting and adjusting systems for vehicles; Controls and drives for convertible tops, sliding roofs and sunscreen devices; Walk-through expansion bellows of rubber or plastic for trams and articulated buses.

Class 35: Advertising, business management, business administration; Office functions; Personnel recruitment; Personnel management consultancy; Business consultancy and advisory services; Public relations services; Radio advertising; Exhibitions for commercial or advertising purposes; Marketing services; Sales research; Marketing studies; Opinion polling; Opinion polling; Retailing, including via the internet, in the fields of vehicles and vehicle accessories, tyres, brakes, fuels and carburants, tools, construction articles, sound recording carriers and data carriers, printed matter, stationery, office requisites, clothing, shoes and textile goods, toys, sporting goods; Wholesaling, including via the internet, in the fields of vehicles and vehicle accessories, tyres, brakes, fuels and carburants, tools, construction articles, sound recording carriers and data carriers, printed matter, stationery, office requisites, clothing, shoes and textile goods, toys, sporting goods; Organisational consultancy relating to granting rights of use for mobility systems; Disseminating advertisements for others via an on-line electronic communications network; Advertising via the Internet; Publication of advertising matter; Advertising agencies via the Internet; Management of databases via the Internet; Electronic data storage and data collection and business data analysis; Providing of information and manufacturing in relation to vehicle fleet management; Personnel services; Personnel recruitment; Human resources management and recruitment services; Personnel management consulting; Consultancy relating to the selection of personnel.

Class 37: Building construction; Motor vehicle workshops, modification, repair, servicing, assembly, disassembly, maintenance, care, cleaning and painting of vehicles, other than aircraft, motors and engines, other than for aircraft, brakes, tyres and parts therefor; Vehicle breakdown assistance (repair), other than for aircraft; Tyre repair; Maintenance, assembly and repair of evaluation apparatus for diagram charts, tachographs, accident data recorders, electronic logbooks, test and diagnostic apparatus and instruments; Vehicle repair services (repair); Vehicle service stations (repair, maintenance, servicing); Vehicle wash; Installation, maintenance and repair of machines and machine parts; Installation, maintenance and repair of conveyor belts and conveyor installations; Installation, repair and maintenance of data technology installations.

Class 38: Telecommunications; Telecommunications by means of platforms and portals on the Internet; Forums [chat rooms] for social networking; Electronic exchange of messages by means of chatlines, chatrooms and internet forums; Web messaging; Computer aided transmission of messages and images; Email services; Electronic transmission of data and documents by computer; Providing of access to computer databases in the field of mobility; Provision of access to websites; Providing access to discussion platforms on the Internet for exchanging information, knowledge and experiences; Providing of an internet discussion platform; Providing search engines; Data communication; Electronic data interchange services; Providing access to telecommunication networks; Providing access to a global computer network for the transfer and dissemination of information; Provision of access to an electronic on-line network for information retrieval; Providing access to an Internet discussion website; Provision of access to sites on an electronic information network; Providing access to Internet forums; Providing user access to portals on the Internet; Providing user access to platforms on the Internet; Providing access to an Internet discussion website; Providing user access to a global computer network and online sites containing information on a wide range of topics; Providing access to e-commerce platforms on the Internet; the provision of chat room services; Providing online chatrooms for the transmission of messages, comments and multimedia content among users; Computer aided transmission of messages; Electronic data interchange services; Communication via virtual private networks; Mobile communications services; Telecommunication services provided via Internet platforms and portals.

Class 39: Transport; Packaging and storage of goods; Travel arrangement; Transport of persons and goods, in particular by road, rail, water and air; River transport; Porterage; Guarded transport of money and valuables; Transportation logistics; Collection of freight; Information in relation to transport, road haulage, traffic jams, traffic conditions, transport schedules, modes of transport, location of goods and freight transport; Filling of vehicles with freight; Consultancy services relating to storage; Providing information relating to warehousing services; Computerised transport information services and Transport services; Distribution services; Forwarding services; Transport brokerage; Unloading and repackaging; Recovery services for vehicles; Rescue [transport] of persons; Vehicle breakdown recovery services; Booking and organising of travel, excursions and cruises; Organising transport services; Sightseeing [tourism]; Tour conducting; travel consultancy and personal chaperoning of travelers; Rental, booking and Aeroplane services and Ships; Rental, booking and arranging of motor vehicles and bicycles; Parcel delivery; Organisation of excursions, holidays and sightseeing; Travel agents services for arranging travel; Travel reservation; Transport reservation; Travel, traffic jam and transportation information; Sending and delivery of newspapers and periodicals; Consultancy in relation to travel and in the field of logistics (transport sector), transport and storage; Location tracking of passenger and freight vehicles via computer or by means of a global positioning system (GPS); Traffic information; Providing information about automobiles for lease by mean of the internet; Vehicle routing by computer on data networks; Storage of parts for motor vehicles.

Class 42: Scientific technological services and research and design relating thereto; Scientific and technological services and research and design services related thereto; Industrial research and development services; Technical project development; Design and development of computer hardware and software; Updating of computer software; Maintenance of software; Technical consultancy relating to granting rights of use for mobility systems; Technical consultancy in relation to evaluation apparatus for tachograph discs, tachographs, accident data recorders, electronic logbooks, test and diagnostic apparatus and diagnostic instruments; Updating of computer software; Updating of Internet pages; Provision of search engines for the Internet; Designing and creating homepages and Internet pages; Installation and maintenance of software; Configuring computer networks by means of software; Data conversion of computer programs and data (not physical conversion); Providing or rental of electronic memory space on the Internet (webspace); Hosting computer sites; Security services for protection against illegal network access; Rental of computers and computer software; Design, development, writing and updating software applications for the direct representation of the reactions of others to propositions and software applications which make it possible to gauge public opinion by allowing direct voting by means of computers or mobile apparatus; Electronic storage of data and information; Programming of software for Internet portals, chatrooms, chat lines and Internet forums; Hosting platforms on the Internet; Hosting online facilities for conducting interactive discussions; Designing, managing and monitoring online forums for discussion.

2. European Union trade mark application No 14 762 819 is rejected for all the contested goods and services. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 762 819, namely against all the goods and services in Classes 12, 35, 37, 38, 39 and 42. The opposition is based on French trade mark registration No 3 966 818. 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.

The goods and services

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

Class 12: Apparatus for locomotion by land, air or water and on rails; shock absorbing springs for vehicles; transmission shafts for land vehicles; automotive; gear boxes for land vehicles; cable transport equipment and installations; pickup vans; trucks; automobile body; anti-skid chains; transmission chains for land vehicles; repair outfits for inner lubes; handling carts; treads for vehicles; spikes for tires; gears for cycles; cycle motors; electric vehicles; lifting cars; tailboard lifts (parts of land vehicles); clutches for land vehicles; gearing for land vehicles; casings for pneumatic tires; balance weights for vehicle wheels; axles for vehicles; axle journals; vans; brakes for vehicles; brake linings for vehicles: brake shoes for vehicles; brake segments for vehicles; bands for wheel hubs; rolling stock for funiculars: screw-propellers; screws for ships; hydraulic circuits for vehicles; motors for land vehicles; tool drives for land vehicles; hubs for vehicle wheels: tires; treads for retreading tires; air pumps (vehicle accessories); propulsion mechanisms for land vehicles; vehicle wheel spokes; spoke clips for wheels; trailer hitches for vehicles; vehicle suspension springs; tires for vehicle wheels; flanges for railway wheel tires; vehicle wheels; rims for vehicle wheels; vehicle wheel spokes; freewheels for land vehicles; vehicle suspension springs; undercarriages for vehicles; transmissions for land vehicles; turbines for land vehicles.

Class 35: Advertising and business information; updating of advertising material; assistance and consultancy for business management and business organization; business management consultancy; bill-posting; direct mail advertising (leaflets, booklets, printed materials samples), for mail order and distance selling, trans-border or not; services provided by a franchisor, namely assistance for industrial or commercial firms management; advisory services or business information; sales promotion for others of any kind; sales management; sales promotion for others of any kind and on any material, namely for mail order and distance selling, trans-border or not; data entry and editing, compiling and processing data and more generally, registration, transcription, systematizing of written communication and visual or audio recording; document reproduction; rental of any kind of advertising material and commercial presentation; computerized file management, advertising and business consultancy; organization of exhibitions for commercial or advertising purposes; arranging subscriptions to a phone or computer (Internet) service; business management of exhibition spaces; goods and services grouping for third parties (except for transport) allowing customers to see and/or buy these goods and services, namely apparatus for locomotion by land, air or water arid on rails; shock absorbing springs for vehicles; transmission shafts for land vehicles, gear boxes for land vehicles, vehicle wheels; rims for vehicle wheels, motor vehicle maintenance, rental and repair, vehicle breakdown transport and assistance (towing), garage and car rental, vehicle roadworthiness testing; services providing by a franchisor, namely know-how transfer (provision) in the field of after-sales networks setting up.

Class 37: Construction and repair information; vehicle breakdown assistance (repair) services; motor vehicle maintenance and repair; vehicle washing; rental of construction equipment; air conditioning apparatus installation and repair; leather care, cleaning and repair; electric appliance installation and repair; building sealing; vehicle greasing; fire alarm installation and repair; machinery installation, maintenance and repair; painting; retreading tires; repair of security locks; vehicle; service stations (refueling and maintenance); burglar alarm installation and repair; window cleaning; electric appliance installation, maintenance and repair, machinery, telephone and furniture installation, maintenance and repair; painting; retreading of tires; vulcanization of tires (repair).

Class 38: Telecommunication services; electronic mail; information transmission by telecommunications network; secure messaging services; data transmission services, namely data packet transmission, dispatch, transmission of computerized documents; electronic mail services; can transfer or telecommunication services; satellite transmission; communications by computer terminals; information transmission services by telematics in order to obtain information stored in databases and image banks; communication services (transmission) by computer networks in general; written communication and visual or audio recording transmission: rental of computer, telecommunication and telematics devices, namely phones, telecommunication devices, facsimile machines, devices for message sending, modems; rental of access time to a databases server center.

Class 39: Transport; vehicle breakdown assistance (towing); parcel delivery; packaging products; storage of goods; delivery of goods; packaging of goods; warehousing; storage; freight forwarding; garage rental; car rental; bus service; hauling; chauffeur services, removal services; rental of vehicle roof racks; transportation information.

Class 42: Vehicle roadworthiness testing; technical project studies; expertise in the field of automotive; ·websites hosting; services providing by a franchisor, namely know-how transfer (provision) in the field of services for cars and trucks (engineering services); programming for electronic equipment for computers, computer telecommunication and telematics systems, multimedia equipment, programming of multimedia equipment; rental of computers, telecommunication and telematics devices, namely computers, computer programs, scanners, burners, printers, printer devices; web design on global networks.

The contested goods and services are the following:

Contested goods in Class 12

As a preliminary remark, it is noted that both the opponent’s and the applicant’s list of goods in Class 12 cover vehicles and a wide range of parts and fittings thereof. As a result, there are examples of identity such as apparatus for locomotion by land, air or water; motors for land vehicles; tyres, wheels, wheel rims, treads for retreading tyres; shock absorbing springs for vehicles, vehicle suspension springs identically included in both lists of goods, or between the contested vehicles that are synonymous and identical to the opponent’s apparatus for locomotion by land, air or water, or the contested materials and kits for the repair of tyres and inner tubes, included in class 12 overlapping with or being identical to the opponent’s repair outfits for inner tubes.

With regard to the remaining contested goods, as stated above, they all belong to the category of parts and fittings of vehicles and, as such, they must be considered at least similar to the opponent’s goods. This is all the more so since manufacturing of vehicles and parts thereof is a rather specialized process and such goods usually come from the same undertakings and are sold to the same customers via the same distribution channels. Also, parts and fittings are very often essential components of a vehicle and, consequently, there is a high degree of complementarity between them.

Contested services in Class 35

The contested advertising; radio advertising; marketing services; marketing studies; Exhibitions for commercial or advertising purposes; disseminating advertisements for others via an on-line electronic communications network; advertising via the Internet; Publication of advertising matter; advertising agencies via the Internet are either identical to or belong to the broad category the opponent’s advertising. Therefore, these services are identical.

The contested management of databases via the internet; electronic data storage and data collection and business data analysis belong to the opponent’s broad category of computerized file management. These services are, therefore, identical.

The contested providing of information and manufacturing in relation to vehicle fleet management belong to the opponent’s broad category of business information. These services are, therefore, identical.

The contested retailing, including via the internet, in the fields of vehicles and vehicle accessories, tyres, brakes, fuels and carburants; wholesaling, including via the internet, in the fields of vehicles and vehicle accessories, tyres, brakes, fuels and carburants, tools consists of the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods. Therefore, these contested services are, de facto, identical with the opponent’s goods and services grouping for third parties (except for transport) allowing customers to see and/or buy these goods and services, namely apparatus for locomotion by land, air or water arid on rails since the services at issues are all aimed at retailing or wholesaling of vehicles and their parts.

The contested business management, business administration; office functions; personnel services; personnel recruitment; personnel management consultancy; human resources management and recruitment services; personnel management consulting; consultancy relating to the selection of personnel; business consultancy and advisory services; public relations services; sales research; opinion polling; organisational consultancy relating to granting rights of use for mobility systems are all business management-related services with a nature and purpose of providing tools, expertise, advice and information to enable customers to carry out and improve their business, or to provide businesses with the necessary support to develop, expand, acquire market share or recruit and manage personnel. These contested services may coincide in providers, distribution channels and relevant public of the opponent’s assistance and consultancy for business management and business organization; business management consultancy. These services are, therefore, highly similar.

The remaining contested services, namely, retailing, including via the internet, in the fields of construction articles, sound recording carriers and data carriers, printed matter, stationery, office requisites, clothing, shoes and textile goods, toys, sporting goods; wholesaling, including via the internet, in the fields of construction articles, sound recording carriers and data carriers, printed matter, stationery, office requisites, clothing, shoes and textile goods, toys, sporting goods consist of retailing or wholesaling of various, non-vehicle related goods. The opponent’s goods and services grouping for third parties (except for transport) allowing customers to see and/or buy these goods and services, namely apparatus for locomotion by land, air or water arid on rails must also be considered as a different wording to define retail or wholesale service, albeit for different goods in this particular case. It must be recalled that retail (wholesale) services relating to specific goods are considered to be similar to retail (wholesale) services relating to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison share the same nature, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use. For all these reasons, the services at issue are similar.

Contested services in Class 37

The contested Building construction is a broad category that involves a wide range of services. Since the Opposition Division cannot dissect this category ex officio, it must be considered identical to the opponent’s construction information.

The contested Installation, maintenance and repair of machines and machine parts; Installation, maintenance and repair of conveyor belts and conveyor installations; Installation, repair and maintenance of data technology installations all belong to the opponent’s broad category of machinery installation, maintenance and repair. Therefore, these services are identical.

The contested motor vehicle workshops, modification, repair, servicing, assembly, disassembly, maintenance, care, cleaning and painting of vehicles, other than aircraft, motors and engines, other than for aircraft, brakes, tyres and parts therefor; vehicle breakdown assistance (repair), other than for aircraft; tyre repair; maintenance, assembly and repair of evaluation apparatus for diagram charts, tachographs, accident data recorders, electronic logbooks, test and diagnostic apparatus and instruments; vehicle repair services (repair); vehicle service stations (repair, maintenance, servicing); vehicle wash are all services that are covered by and, therefore, identical to the opponent’s motor vehicle maintenance and repair.

Contested services in Class 38

All the contested services in this Class, namely, Telecommunications; Telecommunications by means of platforms and portals on the Internet; Forums [chat rooms] for social networking; Electronic exchange of messages by means of chatlines, chatrooms and internet forums; Web messaging; Computer aided transmission of messages and images; Email services; Electronic transmission of data and documents by computer; Providing of access to computer databases in the field of mobility; Provision of access to websites; Providing access to discussion platforms on the Internet for exchanging information, knowledge and experiences; Providing of an internet discussion platform; Providing search engines; Data communication; Electronic data interchange services; Providing access to telecommunication networks; Providing access to a global computer network for the transfer and dissemination of information; Provision of access to an electronic on-line network for information retrieval; Providing access to an Internet discussion website; Provision of access to sites on an electronic information network; Providing access to Internet forums; Providing user access to portals on the Internet; Providing user access to platforms on the Internet; Providing access to an Internet discussion website; Providing user access to a global computer network and online sites containing information on a wide range of topics; Providing access to e-commerce platforms on the Internet; the provision of chat room services; Providing online chatrooms for the transmission of messages, comments and multimedia content among users; Computer aided transmission of messages; Electronic data interchange services; Communication via virtual private networks; Mobile communications services; Telecommunication services provided via Internet platforms and portals are covered by the opponent’s broad category telecommunication services. This is because telecommunication services are those that allow people to communicate with one another by remote means and, today, this communication is overwhelmingly established on-line, via the internet using computers and other IT tools. Therefore, these services are identical.

Contested services in Class 39

The contested transport; transport of persons and goods, in particular by road, rail, water and air; river transport; porterage; guarded transport of money and valuables; transportation logistics; organising transport services; collection of freight; filling of vehicles with freight; computerised transport information services and transport services; distribution services; forwarding services; sending and delivery of newspapers and periodicals; transport brokerage; unloading and repackaging; parcel delivery; rental, booking and aeroplane services and ships; rental, booking and arranging of motor vehicles and bicycles are all part of transport services and are at least similar to the opponent’s transport.

The contested packaging and storage of goods; storage of parts for motor vehicles are synonymous with or belong to the opponent’s packaging of goods; storage of goods. These services are identical.

The contested consultancy services relating to storage; providing information relating to warehousing services are all part of the opponent’s storage of goods. These services are identical.

The contested consultancy in relation to travel and in the field of logistics (transport sector), transport; information in relation to transport, road haulage, traffic jams, traffic conditions, transport schedules, modes of transport, location of goods and freight transport; travel, traffic jam and transportation information; location tracking of passenger and freight vehicles via computer or by means of a global positioning system (GPS); traffic information; providing information about automobiles for lease by mean of the internet; vehicle routing by computer on data networks all belong to the opponent’s broad category of transportation information. These services are, therefore, identical.

The contested recovery services for vehicles; rescue [transport] of persons; vehicle breakdown recovery services are synonymous with or belong to the opponent’s vehicle breakdown assistance (towing). These services are identical.

The contested travel arrangement; booking and organising of travel, excursions and cruises; sightseeing [tourism]; tour conducting; travel consultancy and personal chaperoning of travelers; organisation of excursions, holidays and sightseeing; travel agents services for arranging travel; travel reservation; transport reservation are all aimed at organizing, reserving or consulting transport-related services. They can target the same public and be sold by the same companies via the same distribution channels as the opponent’s transport. Furthermore, there can be complementarity between these services since a company offering transport services can also provide sightseeing or other, tourism-related services. In summary, these services are similar to a high degree.

Contested services in Class 42

The contested providing or rental of electronic memory space on the internet (webspace); hosting computer sites; electronic storage of data and information; hosting platforms on the internet; hosting online facilities for conducting interactive discussions all belong to or identical with the opponent’s broad category of websites hosting. These services are, therefore, identical.

The contested Technical project development is a broad category that the Opposition Division cannot dissect ex officio. As a result, it must be considered to be identical with the opponent’s technical project studies.

The contested rental of computers and computer software are de facto identical to the opponent’s rental of computers, computer programs.

The contested technical consultancy relating to granting rights of use for mobility systems; Technical consultancy in relation to evaluation apparatus for tachograph discs, tachographs, accident data recorders, electronic logbooks, test and diagnostic apparatus and diagnostic instruments are specialist consultancy services related either to traffic control and management or to testing and diagnostics for vehicles. This means that it is covered by the opponent’s broad term of expertise in the field of automotive. These services are, therefore, identical.

The contested scientific and technological services and research and design relating thereto; Scientific and technological services and research and design services related thereto; Industrial research and development services have similar nature as the opponent’s programming for electronic equipment for computers as these latter services require technological design and research before being developed and provided to customers. Consequently, these services usually originate from the same undertakings and target the same public. There is also complementarity between them. In summary, these services are similar.

The contested design and development of computer hardware and software; updating of computer software; maintenance of software; updating of computer software; updating of internet pages; provision of search engines for the internet; designing and creating homepages and internet pages; installation and maintenance of software; configuring computer networks by means of software; data conversion of computer programs and data (not physical conversion); security services for protection against illegal network access; design, development, writing and updating software applications for the direct representation of the reactions of others to propositions and software applications which make it possible to gauge public opinion by allowing direct voting by means of computers or mobile apparatus; programming of software for internet portals, chatrooms, chat lines and internet forums; designing, managing and monitoring online forums for discussion include development and management of hardware and software. The opponent’s programming for electronic equipment for computers consists, inter alia, of the process of writing source code, and a computer program is a set of coded instructions that enables a machine, especially a computer, to perform a desired sequence of operations. Computers need programs to operate while software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation. Therefore, computer programming services are closely linked to computers and software. This is because in the field of computer science, producers of computers and/or software will also commonly provide computer and/or software-related services (as a means of keeping the system updated, for example). Consequently, both the users and the producers/providers of these services coincide. Furthermore, they are services that are complementary. For these reasons these services are considered at least similar.

Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services in conflict are directed at both the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be higher than average for most of the goods and services since they are either expensive or infrequently purchased.

The signs

2025 AD

Earlier trade mark

Contested sign

The relevant territory is France.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark consists of the letter combination ‘AD’ in uppercase letters, slightly tilted to the right. In the background there is a red triangle with white frames. None of these elements are more dominant than the other. The mark’s verbal element will be viewed as an acronym with no particular meaning even though both the applicant and the opponent suggested several interpretations. In fact, this only shows that the said acronym lacks one particular meaning with which consumers would associate it. As a result, the earlier mark’s word element has normal distinctiveness in relation to the goods and services in question while the device and colour elements serve as a decorative background and are, therefore, of lower distinctiveness.

The contested sign consists of the number ‘2025’ and the letter combination ‘AD’. The numbers merely refer to a year in the near future, i.e. 8 years from now, and may be perceived by the relevant public as an indication of a future model, product or activity. This number, therefore, has a limited distinctiveness while the acronym has normal distinctiveness.

Visually, the signs coincide in the word or acronym ‘AD’ being the earlier mark’s only verbal element and the most distinctive element, while they differ in the earlier mark’s figurative and colour elements and the contested sign’s numerals ‘2025’. The earlier mark’s word is entirely included in the contested sign where it retains its independent distinctive role. Furthermore, the signs’ coinciding word element is depicted with only a slight stylization in the earlier mark with little visual impact. With regard to presence of numerals in the contested sign, they in themselves are not capable of counteracting the effect of the coinciding letter combination even though they are placed at the beginning of the contested sign. This is because consumers would see these numerals as a mere reference to a year and would be looking for other information to identify the mark. With regard to the opponent’s argument that consumers usually focus on the first part of a sign, the Opposition Division points out that this principle is not applicable to all situations and cannot, in any event, undermine the principle that an analysis of the similarity between two trade marks must take into account the overall impression given by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (10/12/2008, T–228/06, Giorgio Beverly Hills, EU:T:2008:558, § 28 and the case-law cited therein).

Overall, the fact that the earlier mark’s only, distinctive word element is included in the contested sign in a easily recognizable manner and with the same distinctive role is only to a certain extent offset by the contested sign’s numerals and, even less so, by the additional differing elements which are of mere decorative purpose. Based on all these considerations, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllable or syllables [AD] (depending on whether it is pronounced as one word or as an acronym). The pronunciation differs in the sound of the numbers ‛deux milles veingt cinq’ which have no counterparts in the earlier sign. As explained above, the numerals will be interpreted as a year and consumers would probably read on in search of additional information to identify the goods and services. Even so, the fact remains that the phonetic impact of the coincidence of the distinctive word elements are somewhat offset by the different number of syllables. Overall, the signs are aurally similar to an average degree.

Conceptually, the public will perceive the first element of the contested mark as an indication of a year while the other sign only includes the acronym ‘AD’ with no meaning in the relevant territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case.

As a consequence, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Global assessment, other arguments and conclusion

In its observations, the applicant argued that the figurative element in the opponent’s mark is in itself a registered trade mark, which supposedly shows that it cannot have a mere decorative purpose in the present case, either. It must be noted in this regard the opponent’s other registered mark referred to by the applicant is completely irrelevant in the present case as that right was not invoked here. Furthermore, for the sake of principle, it must be pointed out that the fact an element is distinctive in one mark does not mean that the same element used in combination of other ones retains the same level of distinctiveness.

The applicant also referred to numerous previous decisions. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous decisions referred to by the applicant are not relevant to the present proceedings since there seem to be significant visual differences between the signs in those cases. In any event, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

In the present case, all of the contested goods and services are identical or similar to those of the opponent. The owner of the earlier mark has protection for the letter combination ‘AD’ with a decorative device. The contested mark includes the same letter combination ‘AD’ and this coinciding element has an independent distinctive role in the mark, being clearly visible and separate. The contested sign also contains the number 2025, which is likely to be understood as a year, and therefore has a limited inherent distinctiveness or trade mark significance. There is a visual and aural similarity due to the coincidence of the ‘AD’ letter combination. There are insufficient distinctive component parts in the contested sign to draw attention away from the letters AD, and therefore there is a likelihood that consumers will confuse the contested sign with the opponent’s mark when used on similar or identical goods and services.

Therefore, the differences between the signs do not counteract the similarity resulting from the coincidence of the element ‘AD’ and consumers will readily assume that the identical or similar goods or services come from the same undertaking or economically linked undertakings. This is all the more likely since the differing element of the contested sign are of such a nature as to lead customers to believe that the contested sign is used as a sub-brand of the opponent’s mark, for example for products and activities planned in the near future.

Considering all the above, there is a likelihood of confusion on the part of the public, notwithstanding the fact that the consumer will exercise a higher than average degree of attention at the time of purchase.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 3 966 818. It follows that the contested trade mark must be rejected for all the contested goods and services while it may proceed for the non-contested ones.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its/their extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marianna KONDÁS

Ferenc GAZDA

Michaela SIMANDLOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

Leave Comment Cancel reply