CANCELLATION No 12 704 C (INVALIDITY)

BBS GmbH, Welschfor 220, 77761 Schiltach, Germany (applicant), represented by Klaka, Delpstr. 4, 81679 Munich, Germany (professional representative)

a g a i n s t

Paalupaikka Oy, Kivirannantie 9, PL 19, 74101 Iisalmi, Finland (EUTM proprietor).

On 31/03/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is partially upheld.

2.        European Union trade mark No 12 283 231 is declared invalid for some of the contested goods, namely:

Class 12:        Vehicles; Apparatus for locomotion by land; Unmanned vehicles; Vehicles for land use; Ammunition wagons (vehicles); Vehicles incorporating bucket loaders; Carts (vehicles); Tractor drawn land vehicles; Pedal driven land vehicles; Vehicles adapted for military purposes; Vehicles adapted for disabled persons; Self-loading vehicles; Rocket-propelled vehicles; Electric land vehicles; Vehicles for animal transport; Vehicles for locomotion by land; Vehicles incorporating apparatus for loading; Remote controlled vehicles; Remotely piloted vehicles; Electric tractors [vehicles]; mobility scooters; Vehicles for the physically handicapped and those with limited mobility; Vehicles and means of transport; Linear induction motor drive vehicles; Freight carrying vehicles; Remote control vehicles, other than toys; Remote control vehicles, other than toys; Industrial vehicles; Refrigerated vehicles; Remotely controlled land vehicle; Military vehicles for transport; Motorised passenger vehicles; Automatically controlled vehicles; Electric trucks (vehicles); Vehicles and means of transport for land use; Vehicles for travel by land; Pedal land vehicles; Vehicles for the tipping loads; Armour protected land vehicles; Armoured land vehicles; Armored vehicles; Campers (vehicles for recreational use); Passenger carrying vehicles; Non-motorised scooters (vehicles); Motorized land vehicles; Tanker lorries (land vehicles); Vehicles for disabled persons; Wheeled vehicles; Vehicles; Industrial land vehicles; Vehicles for use on land; Vehicles fitted with living accommodation; Electric vehicles; Vehicles incorporating apparatus for tipping.

3.        The European Union trade mark remains registered for all the services in Class 35, which were not contested, and for the following goods:

Class 12:        Apparatus for locomotion by air or water; Rocket launching platforms (vehicles); Vehicles for locomotion by sea; Underwater vehicles; Waterborne vehicles; Submarine vehicles; Air cushion vehicles.

        

4.        Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 12 283 231 namely against some of the goods in Class 12. The application is based on, inter alia, German trade mark registration No 1 067 894. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the goods and signs in conflict are extremely similar and that the earlier marks possess a high degree of distinctiveness. In particular, it argues that the signs are visually similar to such an extent that the average consumer will not look for differences regarding the phonetic and conceptual comparison. As regards the comparison of the goods, it considers that they are closely related:  the contested goods are vehicles that have or may have wheels, wheel rims and, as the case may be, spoilers. Consequently, there is a likelihood of confusion between the earlier trade marks and the European Union trade mark No 12 283 231 (hereinafter, ‘the contested EUTM’).

In support of its observations, the applicant filed the following evidence:

• Annex 1: a copy of the Wikipedia-article on ‘BBS Kraftfahrzeugtechnik’ (undated);
• Annex 2: excerpt from the lifestyle magazine Complex, ‘The 10 Best Aftermarket Wheel Manufacturers Right Now’ (30/04/2013);
• Annex 3: printout of 04/11/2015 from www.tirerack.com;
• Annex 4: printout of 04/11/2015 from Performance Alloys website (car parts and fittings dealer);
• Annex 5: printout of 04/11/2015 from LK Performance website;
• Annex 6: printouts from various websites (undated) with allegedly, underwater, waterborne or submarine vehicles with wheels.

The EUTM proprietor argues that it is the holder of the ‘885’ trade mark which differs from the applicant’s mark ‘BBS’ both visually and aurally. The overall impression of the marks in conflict is different. Therefore, there is no risk of confusion.

In its reply, the applicant notes that the EUTM proprietor has not contested the similarity of the goods or the enhanced distinctiveness of the earlier trade marks. Moreover, it contends that the digits ‘885’ and the letters ‘BBS’ are not only very similar per se but the typeface and style is identical. This makes the signs look even more alike. It refers to (and encloses) the decision of the Opposition Division in opposition B 2 540 543 of 15/07/2016 which confirmed the similarity between the earlier German trade mark and a trade mark comparable to the contested EUTM.

In its rejoinder, the EUTM proprietor insists that the contested EUTM clearly consists of the numbers ‘885’ and that the most remarkable difference between the marks is the red circle behind the digits of the contested EUTM. It reiterates that there is no risk of confusion. The EUTM proprietor encloses a decision of the Opposition Division in opposition B 2 574 575 of 05/10/2016 where the earlier trade marks were found dissimilar to the word mark ‘885’.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s German trade mark registration No 1 067 894.

1. The goods

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 goods on which the application is based are the following:

Class 12:        Light metal wheel rims for cars; body parts, namely front and rear spoilers.

The contested goods are the following:

Class 12:        Vehicles; Apparatus for locomotion by land, air or water; Unmanned vehicles; Vehicles for land use; Ammunition wagons (vehicles); Vehicles incorporating bucket loaders; Carts (vehicles); Tractor drawn land vehicles; Pedal driven land vehicles; Vehicles adapted for military purposes; Vehicles adapted for disabled persons; Self-loading vehicles; Rocket-propelled vehicles; Electric land vehicles; Vehicles for animal transport; Vehicles for locomotion by land; Vehicles incorporating apparatus for loading; Remote controlled vehicles; Remotely piloted vehicles; Electric tractors [vehicles]; mobility scooters; Vehicles for the physically handicapped and those with limited mobility; Vehicles and means of transport; Linear induction motor drive vehicles; Freight carrying vehicles; Remote control vehicles, other than toys; Remote control vehicles, other than toys; Industrial vehicles; Refrigerated vehicles; Remotely controlled land vehicle; Military vehicles for transport; Motorised passenger vehicles; Automatically controlled vehicles; Electric trucks (vehicles); Vehicles and means of transport for land use; Vehicles for travel by land; Rocket launching platforms (vehicles); Pedal land vehicles; Vehicles for the tipping loads; Underwater vehicles; Waterborne vehicles; Armour protected land vehicles; Armoured land vehicles; Armored vehicles; Campers (vehicles for recreational use); Passenger carrying vehicles; Non-motorised scooters (vehicles); Motorized land vehicles; Tanker lorries (land vehicles); Submarine vehicles; Vehicles for disabled persons; Wheeled vehicles; Vehicles; Industrial land vehicles; Vehicles for use on land; Vehicles fitted with living accommodation; Electric vehicles; Vehicles incorporating apparatus for tipping.

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 with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 12

The applicant’s goods consist of specific parts of a car, namely light metal wheel rims for cars and of specific body parts, namely front and rear spoilers in Class 12.

The contested goods vehicles; Apparatus for locomotion by land; Unmanned vehicles; Vehicles for land use; Pedal driven land vehicles; Vehicles adapted for military purposes; Vehicles adapted for disabled persons; Electric land vehicles; Vehicles for locomotion by land; Remote controlled vehicles; Remotely piloted vehicles; Vehicles for the physically handicapped and those with limited mobility; Vehicles and means of transport; Linear induction motor drive vehicles; Remote control vehicles, other than toys; Remote control vehicles, other than toys; Remotely controlled land vehicle; Military vehicles for transport; Motorised passenger vehicles; Automatically controlled vehicles; Vehicles and means of transport for land use; Vehicles for travel by land; Pedal land vehicles; Armour protected land vehicles; Armoured land vehicles; Armored vehicles; Passenger carrying vehicles; Motorized land vehicles; Vehicles for disabled persons; Wheeled vehicles; Vehicles; Vehicles for use on land; Electric vehicles can all consist of cars. These goods can be manufactured by the same companies which produce the applicant’s light metal wheel rims for cars, front and rear spoilers. Moreover, they share the same end users and distribution channels. Finally, the goods are complementary as the contested vehicles necessarily incorporate at least wheel rims, and often front and rear spoilers. Therefore, they are similar.

Likewise, the contested vehicles incorporating bucket loaders; Self-loading vehicles; Rocket-propelled vehicles; Vehicles for animal transport; Vehicles incorporating apparatus for loading; Freight carrying vehicles; Industrial vehicles; Refrigerated vehicles; Vehicles for the tipping loads; Industrial land vehicles; Vehicles fitted with living accommodation; Vehicles incorporating apparatus for tipping even if they refer to vehicles with specific add-on components (such as bucket loaders, apparatus for tipping) or for specific purposes (loading, tipping, freight, industrial use) can all consist of cars or certainly be manufactured by companies which also manufacture cars. Therefore, by analogy with the above conclusions, the goods are similar to the applicant’s light metal wheel rims for cars, front and rear spoilers.

As regards the contested ammunition wagons (vehicles); Carts (vehicles); Tractor drawn land vehicles; Electric tractors [vehicles]; mobility scooters; Electric trucks (vehicles); Campers (vehicles for recreational use); Non-motorised scooters (vehicles); Tanker lorries (land vehicles), they all consist of land vehicles other than cars. Yet, manufacturers of these land vehicles often coincide with the manufacturers of cars. For instance, important manufacturers of cars (and consequently the parts thereof such as wheel rims and spoilers) are also active in the production of scooters, tractors or trucks and vice-versa. Moreover, being all wheeled vehicles they also include wheel rims. In addition, they may include front or rear spoilers. As a result, the contested goods may coincide in producers, end users and distribution channels with the applicant’s goods. The goods are therefore similar.

Concerning the contested goods apparatus for locomotion by water; Underwater vehicles; Waterborne vehicles; Submarine vehicles the Cancellation Division finds them dissimilar to the applicant’s goods. It is extremely infrequent that apparatus to be use on or in the water include metallic wheel rims or spoilers. Moreover, manufacturers of apparatus for locomotion by water do not normally coincide with producers of light metal wheel rims for cars and spoilers or otherwise car manufacturers. Similarly, the goods are sold via different distribution channels and they are not in competition or are complementary. The evidence put forward by the applicant in order to show water vehicles which have wheel rims and spoilers (Annex 6) does not call this conclusion into question. In fact, from the adduced evidence it seems that the underwater vehicle shown on the pictures (the sQuba) is a prototype for a Motor Show. As regards the other example, the “amphibious vehicle” (the Panther WaterCar), it is unclear whether this type of cars is indeed actually commercialised.

Similarly, the contested goods apparatus for locomotion by air and Rocket launching platforms (vehicles) are considered dissimilar to the applicant’s goods. Although these vehicles and apparatus may have, broadly speaking wheels with rims, it is uncommon that producers of light metal wheel rims for cars or spoilers also manufacture aircrafts or vehicles for use in the rocket industry. Moreover, the goods are sold via different distribution channels and do not coincide in end users. Finally, they are not in competition or are complementary.

2. 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, some of the goods found to be similar are directed at the public at large looking to purchase new cars, scooters or campers or just interested in tuning their vehicles with new wheel rims and spoilers. In any event, the vast majority of these goods are (also) directed at business customers with specific professional knowledge or expertise (for instance, wheel rims and spoilers sold to car manufacturers to incorporate them in the final product, famers purchasing a tractor, industrial clients).  The degree of attention in either case is high, considering that vehicles are expensive goods and the parts thereof are infrequent purchases which require a high level of attention as a number of factors have to be taken into account (for instance, the width of the wheel or its diameter).

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is Germany.

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

The earlier trade mark is a figurative mark consisting of the letter combination ‘BBS’ in upper case lettering in slight italics and with black shading. The mark also contains a (very small) ‘R’ in a circle to the top right of the mark.

The contested sign is also a figurative mark consisting, at first sight, of a series of gold digits or letters which could be interpreted as ‘885’ or ‘BBS’. After a closer look, the sign appears to represent the digits ‘885’, with grey shading inserted in a circular and red background.

The letter combination of the earlier mark has no meaning in connection with the relevant goods in Class 12. The ‘R’ in a circle in the earlier trade mark will be perceived as indicating that the sign is a registered trade mark. This is a negligible element and it will not be taken into account in the comparison. The element ‘BBS’ is therefore the most distinctive and dominant element.

As regards the contested sign, it is composed of distinctive verbal element (‘885’) in relation to the relevant goods and a less distinctive figurative element of a purely decorative nature (the background circle in red). The red circle will be considered as a decorative element as it is often the case that the colour red and simple geometric forms such as circle are used in the publicity of products. Therefore, the verbal element is more distinctive than the figurative element. Moreover, it is the dominant element considering its upfront position.

Visually, irrespective of whether the contested sign will be read as ‘885’ or ‘BBS’, the signs are undoubtedly visually highly similar as regards their most distinctive and dominant elements. These verbal elements have very similar stylizations which render the digits in the contested sign very similar to the letters of the earlier mark. The differences in the use of the colour in the contested mark do not alter this finding. In particular, contrary to the EUTM proprietor’s submissions, the red circle cannot be considered such a remarkable difference between the signs that would create an overall different impression with the earlier trade mark. As mentioned above, it will be considered as a merely decorative element.

Aurally and conceptually, the signs are dissimilar if the contested sign is perceived as the digits ‘885’ to the extent that the contested mark will be associated with the number ‘885’ whereas the earlier mark does not convey any meaning as such. However, in view of the remarkable visual similarities between the digits ‘885’ and the letters ‘BBS’, it cannot be excluded that part of the public will associate the contested sign with the sequence of letters ‘BBS’. In this case, the signs are meaningless so there is no impact on the conceptual comparison. However, they will be aurally identical.

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

4. 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 applicant, the earlier trade mark enjoys a high degree of distinctiveness as result of its long-standing and intensive use in Germany for some of the goods for which it is registered, namely light metal wheel rims. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C-251/95, Sabèl, EU:C:1997:528), and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442).

The applicant must prove that its earlier right has acquired enhanced distinctiveness by the filing date of the contested EUTM (that is, 06/11/2013), taking account, where appropriate, of any priority claimed. In addition, the enhanced distinctive character of the earlier mark must still exist at the time of the filling of the request for invalidity (that is, 15/03/2016).

The applicant submitted the evidence listed above under ‘SUMMARY OF THE PARTIES’ ARGUMENTS’.

Having examined the material listed above, the Cancellation Division concludes that the evidence submitted by the applicant is not sufficient to demonstrate that the earlier trade mark acquired a high degree of distinctiveness through use at the time of the filing of the contested EUTM. In particular, all the documents except Annex 2 are either undated (Annex 1, Wikipedia-article) or dated after the filing date of the contested EUTM (Annex 3 to 5). As a result, it is not possible for the Cancellation Division to conclude on the enhanced distinctiveness acquired by the earlier trade mark in Germany merely on the basis of an excerpt from the lifestyle magazine Complex, UK edition. Admittedly, the article identifies ‘BBS’ at the top of the best aftermarket (and perhaps non-aftermarket) wheel rims manufacturers, indicating that its rims are used by well-known German car manufacturers. However, this article only shows the perception of the trade mark by one magazine on a given point in time, presumably in the UK. The submitted evidence lacks information on, for instance, the use of the mark in the relevant territory, the amount invested by the applicant in promoting the mark or the market share held by the mark (see in this regard, 22/06/1999, C-342/97 Lloyd Schuhfabrik, EU:C:1999:323, § 23).

Consequently, 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 rom the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see ‘Canon’, § 16). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

The goods have been found similar. The signs in conflict present a high degree of visual similarity which makes the three digit combination ‘885’ of the contested EUTM to highly resemble the letters ‘BBS’ of the earlier mark. As above indicated, such degree of visual similarity in the most distinctive and dominant elements of the signs can have a bearing on the pronunciation of the signs.

Taking into account 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), the Cancellation Division concludes that it cannot be excluded that part of the relevant public in Germany (even a professional public) will associate the three digit combination of the contested EUTM with the three letter combination of the earlier mark.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s German trade mark registration. 

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed at these goods cannot be successful.

The applicant has also based its cancellation application on the following earlier trade mark:

• International trade mark registration  No 547 771 for the figurative mark designating Bulgaria, Benelux, Czech Republic, Germany, Spain, France, Croatia, Italy, Latvia, Austria, Portugal, Romania, Slovenia and Slovakia.

Since this mark is identical to the one compared and cover the same or a narrower scope of goods (light metal wheel rims for privately-owned motor cars, parts of vehicles bodies, namely front and rear spoilers of plastic materials), the outcome cannot be different for goods for which the cancellation application has already been rejected. Therefore, there is no likelihood of confusion for those goods.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Michaela SIMANDLOVA

Elisa ZAERA CUADRADO

José Antonio GARRIDO OTAOLA

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.