OPPOSITION No B 2 500 646

Cigüeñales Sanz, S.L., Pol. Ind. Malpica C/F 44 y 45, 50016 Zaragoza, Spain (opponent), represented by Clarke, Modet y Cia. S.L., Rambla de Méndez Núñez 12, 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

Mza Meyer-Zweiradtechnik GmbH, Heckenweg 24, 34246 Vellmar, Germany (applicant), represented by Engel Patentanwaltskanzlei, Marktplatz 6, 98527 Suhl, Germany (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 500 646 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 536 149. The opposition is based on European Union trade mark application No 13 517 198. 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.

1. The goods and services

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

Class 7: Crank shafts; camshafts for machines; camshafts for air vehicles; cam shafts; camshafts for water vehicles; cylinder heads for engines.

Class 12: Crankshafts for land vehicles; Transmission shafts for land vehicles; camshafts for land vehicles; engine blocks and cylinder heads for land vehicles.

Class 35: Wholesaling and retailing in shops and via global computer networks, business representations and sole agencies for crank shafts, crank shafts for land vehicles, transmission shafts for land vehicles, cam shafts for land vehicles, engine blocks and cylinder heads for land vehicles, cam shafts for machines, cam shafts for aircraft, cam shafts, cam shafts for water vehicles, cylinder heads for engines.

The contested goods are the following:

Class 9:         Revolution counters and tachometers, and drive shafts and speedometer drives therefor; speed indicators, speed checking apparatus for vehicles; mechanical and electrical measuring and display apparatus for vehicles.

Class 12: Braking systems for vehicles and parts thereof; brake linings, brake pads, brake segments, brake sets for vehicles; brake discs, brake cylinders, brake pipes for vehicles; hydraulic brake pressure regulators for vehicles; brake cables [parts of motorcycles]; brake drums for vehicles; brake pedals [parts of motorcycles]; brake levers for vehicles; brakes for bicycles, cycles; two-wheeled vehicles and parts therefor, included in class 12; bowden cables and cable hoists for vehicles.

Some of the goods are identical insofar as the contested two wheeled vehicles and parts therefor, included in class 12 and the earlier engine blocks and cylinder heads for land vehicles overlap. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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, the goods and services assumed to be identical are directed at both, a specialised public and the public at large. Indeed, some of the goods at issue are specialised goods directed at business customers with specific professional knowledge or expertise, namely car and machine manufacturers, spare part manufacturers, automobile mechanics. Other goods are also meant for the average consumer, such as vehicles or their spare parts for repair or maintenance purposes. The degree of attention of the relevant public may vary from average to high according to the level of specialisation of the goods, their price and the frequency of purchase.

3. The signs

Earlier trade mark application	Contested sign

The relevant territory is European Union.

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).

In the earlier sign, the element ‘BALO’ is dominant as it is the most eye-catching due to its size, the fact that it is framed by two thick lines that make it stand out and its first position. This element has no counterpart in the contested sign and this difference at the top of the sign is important as consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, and top to bottom, which makes the part placed at the left of the sign or at the top (the initial part) the one that first catches the attention of the reader. Since ‘BALO’ has no meaning in connection with the goods and services, it is therefore distinctive.

The earlier sign is also composed of the term ‘MOTORTEX’ and the contested sign is ‘MOTOFLEX’. The relevant public will break these down into elements as at least MOTOR and MOTO suggest specific meanings. This follows from settled case-law that states  that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Indeed, the element ‘MOTOR’ is an English term commonly used in industry and on the automobile market and it is, the same or has very close equivalents in different languages of the relevant territory, (for example, “motor” is used in Spanish, Hungarian, Slovak and Czech, “motore” in Italian, “moteur” in French). Therefore, it will be perceived as such in the whole of the territory and will be associated with “machinery intended to produce movement at the expense of another source of energy”. Bearing in mind that the relevant goods and services are in the field of spare parts for motors, this element is weak for the goods and services.  

In the contested sign, the element ‘MOTO’ is the diminutive form of ‘motorcycle’ in some languages, such as Spanish, French and Italian. Furthermore, ‘moto’ is commonly used as a prefix in many of the relevant languages, with the meaning of ‘motorbike’ or at least referring to motor vehicles, for example in the word ‘motocross’, which exists as such or in a very similar form in virtually all the relevant languages (‘motocross’ in English, Danish and Swedish, ‘Motocross’ in German, ‘motokros’ in Czech and Polish, ‘motokroso’ in Lithuanian, ‘motocros’ in Romanian, ‘motokrossi’ in Estonian, ‘motokrossz’ in Hungarian, etc.). Therefore, it will be perceived as such in the whole of the territory. Bearing in mind that the relevant goods and services are in the field of spare parts for motors, this element is weak for the goods and services.  

The earlier sign is also composed of the  element ‘TEX’ which has various meanings. The Office finds it plausible that part of the relevant public may associate this element to the concept of textile, as identical or similar terms are used in some of the relevant EU languages to designate this concept, like the term textilní in Czech, textiel in Dutch, textile in French, Textilien in German, têxtil in Portuguese, textil in Hungarian, Spanish and Swedish. However, part of the relevant public, such as the Estonian, Slovenian, Latvian, Finnish, Italian, Lithuanian and Polish speaking-public will see this word as fanciful and meaningless. Even though part of the relevant public can associate the element ‘TEX’ with textile, as it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is also distinctive.

The element ‘FLEX’ at the end of the contested sign is likely to be associated with the concept of flexibility, as similar terms are used in some of the relevant EU languages to designate this concept, like the term flexibilita in Czech, flexibiliteit in Dutch, flexibilität in German, flexibilité in French, flexibilidade in Portuguese, fleksibilitet in Danish, flexibilitate in Romanian, flexibilitet in Swedish, and flexibilidad in Spanish. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive. This also applies to the other  part of the relevant public, such as the Estonian, Slovenian, Latvian, Finnish, Italian, Lithuanian and Polish speaking-public who will see this word as fanciful and meaningless.

Visually, the signs coincide in the letter sequences ‘MOTO’ and ‘EX’. However, they differ in their stylisation as well as in the additional term ‘BALO’ of the earlier sign which is dominant and distinctive and in the letters ‘RT’ and ‘FL’ respectively in the middle of the non-dominant word ‘MOTORTEX’ and in the middle of the contested sign.

Taking into account that the signs coincide in the weak term ‘MOTO(R)’, also less dominant in the earlier sign, and in the element ‘EX’ which is in secondary positioning towards the back of the signs, they are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier sign is pronounced as ‘BA-LO MO-TOR-TEX’ and the contested sign as ‘MO-TO-FLEX’. The pronunciation of the signs coincides in the sound of the letters ‘MO-TO’ and ‘EX’. However, the pronunciation differs in the syllables of the most dominant element ‘BA-LO’ of the earlier sign, which have no counterpart in the contested mark and the sound of the letters ‘RT’ and ‘FL’ respectively in the middle of the non-dominant word ‘MOTORTEX’ and in the middle of the contested sign. Bearing in mind as well that ‘MOTOR’/‘MOTO’ have been found weak for the relevant goods and services, there will be a low degree of aural similarity between the signs.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar 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.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The signs have been found conceptually not similar and visually and aurally similar to only a low degree.

This conclusion has been reached in light of the fact that the overlapping elements in the signs ‘MOTOR’/ ‘MOTO’ are weak elements which have different meanings for the relevant public. The main differentiating element ‘BALO’ is dominant, distinctive and therefore clearly distinguishes the marks. Moreover, the opponent argues that the signs coincide in the term ‘MOTOFLEX’/‘MOTORTEX’. Even though they have common letters, the endings ‘TEX’ and ‘FLEX’ are different, distinctive and help to distinguish the two signs. In these circumstances, the opponent’s argument that there is a risk of confusion due to the coincidence in a string of letters cannot be upheld.

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).

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) 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

Saida CRABBE

Lucinda CARNEY

Vanessa PAGE

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.