OPPOSITION No B 2 476 524
Jean Karras, 6, rue Emile Yung, 1205 Geneve, Switzerland (opponent), represented by T Mark Conseils, 31, rue Tronchet, 75008 Paris, France (professional representative)
a g a i n s t
Volkswagen Aktiengesellschaft, Berliner Ring 2, 38440 Wolfsburg, Germany (applicant), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartGmbB, Am Kaffee-Quartier 3, 28217 Bremen, Germany (professional representative).
On 23/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 476 524 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 340 997 for the word mark ‘AUTOVISION’. The opposition was initially directed against all the goods in Class 9 and some of the services in Classes 35 and 42. Following a limitation in the specification of the list of goods and services and the partial rejection of the contested trade mark application in parallel opposition proceedings, the opposition is directed against all (fewer than initially) goods in Class 9 and some (fewer than initially) of the services in Class 35. The opposition is based on European Union trade mark registration No 1 046 960 and French trade mark registrations No 1 696 805 and No 93 460 071, all for the word marks ‘AUTOVISION’. The opponent invoked Article 8(1)(b) EUTMR.
SUBSTANTIATION – FRENCH TRADE MARK REGISTRATIONS No 1 696 805 AND No 93 460 071
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.
In the present case, the evidence submitted by the opponent along with the notice of opposition in relation to earlier French trade mark registrations No 1 696 805 and No 93 460 071 consists of extracts from the database of the French Institute of Industrial Property (INPI). This evidence is not in the language of the proceedings, namely English.
On 17/02/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 22/06/2015.
On 17/06/2015, the opponent submitted additional observations in support of its opposition. However, in relation to earlier French trade mark registrations No 1 696 805 and No 93 460 071, the opponent did not submit the necessary translations of the database extracts.
The Opposition Division notes that the Office does not consider that information already given in the language of the proceedings in the notice of opposition, or in documents attached thereto or submitted later (e.g. explanation of grounds, lists of earlier marks, etc.), amounts to a valid translation of a registration document, even when such indications have been accepted for admissibility purposes.
According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.
It follows that the evidence filed by the opponent in French cannot be taken into account.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, insofar as it is based on earlier French trade mark registrations No 1 696 805 and No 93 460 071.
The examination will continue in relation to earlier European Union trade mark registration No 1 046 960.
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 services on which the opposition is based are the following:
Class 35: Advertising.
Class 37: Maintenance and repair of vehicles.
Class 42: Testing roadworthiness and technical consultancy with regard to vehicles.
After a limitation in the specification of the list of goods and services made by the applicant on 23/01/2015 and the partial rejection of the contested trade mark application on 07/01/2016 in parallel opposition proceedings B 2 476 482, confirmed by the final decision of the Boards of Appeal of 22/09/2016 in R 347/2016-2, the contested goods and services are the following:
Class 9: Magnets, magnetising and demagnetising devices, apparatus for treatment using electricity; plugs, sockets and other contacts [electric connections]; locks, electric; parts and accessories for all the aforesaid goods, included in this class.
Class 35: Trading and consumer information, namely retailing and wholesaling, mail order retailing and wholesaling, retailing and wholesaling via the internet and retailing and wholesaling by means of teleshopping channels in relation to hand tools for repair and maintenance.
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 applicant’s list of goods and services 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 and services.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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.
Contested goods in Class 9
The contested goods in Class 9 are apparatus, instruments and devices with various specific applications. The opponent’s services in Classes 35, 37 and 42 are advertising services and services related to maintenance, repair, testing and technical support in relation to vehicles. The contested goods in Class 9 and the opponent’s services in Classes 35, 37 and 42 are not related. They have different purposes and natures, given that services are intangible whereas goods are tangible, and the methods of use of those goods and services are different. Although some of the contested goods may be used for the provision of vehicle repair or testing, or may be the object of some of the opponent’s services, this does not render them similar to the opponent’s services. They usually differ in their producers/providers and in their relevant public and distribution channels.
The opponent’s services in Classes 37 and 42 target general users who seek maintenance and repair of their vehicles or need to pass regular vehicle inspection. On the other hand, the contested goods in Class 9 are either goods with various specific purposes (e.g. magnetising and demagnetising devices, apparatus for treatment using electricity) or specific goods which could be used in vehicles (e.g. locks, electric). There is some connection between some of the contested goods and the opponent’s services, to the extent that they are or may be related to vehicles. However, although some goods may be used for the maintenance of vehicles or can be installed in vehicles, this is not sufficient for a finding of similarity. They have different natures and methods of use, and the market reality shows that the producers of such apparatus and instruments are different from the undertakings offering the opponent’s services (e.g. maintenance and repair). Therefore, the relevant consumers would not expect these goods and services to have the same origin. Consequently, the contested goods in Class 9 are dissimilar to the opponent’s services in Classes 37 and 42.
The opponent’s advertising services in Class 35 consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products may be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc. The nature and purpose of advertising services are fundamentally different from the manufacture of the contested goods in Class 9. The mere fact that some goods may appear in advertisements is insufficient for finding a similarity. Therefore, the contested goods in Class 9 are also dissimilar to the opponent’s advertising in Class 35.
Contested services in Class 35
The contested trading and consumer information, namely retailing and wholesaling, mail order retailing and wholesaling, retailing and wholesaling via the internet and retailing and wholesaling by means of teleshopping channels in relation to hand tools for repair and maintenance consist of different forms of activities around the actual sale of various goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the opponent’s services in Classes 35, 37 and 42.
As seen above, the opponent’s advertising in Class 35 is provided by specialised companies which study their client’s needs and provide information and advice for the marketing of their products and services. The opponent’s advertising and the contested services mentioned in the previous paragraph are provided by different undertakings and differ in distribution channels. The relevant public is different. Furthermore, these services are neither in competition nor complementary.
The opponent’s services in Classes 37 and 42 are specialised services related to maintenance, testing or technical consultancy in relation to vehicles. The contested services mentioned above refer to activities related to the sale of goods that may be used for the repair and maintenance of vehicles. However, they do not refer to activities related to the sale of vehicles or spare parts that are indispensable parts thereof. The services under comparison are usually offered by different undertakings. Contrary to the opponent’s arguments, it is not common for companies providing activities related to the sale of tools for repair and maintenance to also provide, for example, services of maintenance and repair of vehicles. The services differ in distribution channels and relevant public. They are neither complementary nor in competition.
Consequently, the contested trading and consumer information, namely retailing and wholesaling, mail order retailing and wholesaling, retailing and wholesaling via the internet and retailing and wholesaling by means of teleshopping channels in relation to hand tools for repair and maintenance are dissimilar to all of the opponent’s services in Classes 35, 37 and 42.
- Conclusion
Article 8(1)(b) EUTMR states that ‘the trade mark applied for shall not be registered: if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’ (emphasis added).
Therefore, 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 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
|
Catherine MEDINA |
Boyana NAYDENOVA |
Martina GALLE |
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.