OPPOSITION No B 2 401 597

Bayerische Motoren Werke AG, Petuelring 130, 80809 München, Germany (opponent), represented by Christian Käser, Bayerische Motoren Werke AG, Petuelring 130, 80809 München, Germany (employee representative)

a g a i n s t

SMW Engineering, 19 Nekrasova str., Saint Petersburg, 191014 Russia, and Eliza Nikolova, 44 Evlogi Georgiev Blvd., 1000 Sofia, Bulgaria (applicants).

On 21/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 401 597 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 705 364. The opposition is based on European Union trade mark registration No 91 835. 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 opposition is based on the goods and services in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 and 42, in particular on the following goods:

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of metal, included in Class 6; ores.

Class 12: Vehicles and parts therefor; motors for land vehicles; machine coupling and transmission components for land vehicles; automobile accessories, namely towing ropes and bars, trailer couplings, anti-burglar and anti-theft security devices, bicycle holders and bicycle lifts, roof racks, anti-skid chains, straps and clamps, head rests, air pumps, mudguards, safety belts and air bags, safety seats for children, ski carriers, sun screens and blinds, surfboard holders, tanks, wind deflectors, decorative trimming and stripes, luggage trunks; motorcycle accessories, namely anti-theft devices, repair outfits for inner tubes, luggage containers, luggage carriers and roof racks, air pumps, pack bags, roll bars, tank rucksacks and bags, clothing; apparatus for locomotion by land, air or water.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from rubber, gutta-percha or gum in the form of blocks, plates, rods, foils, cord or bands (all being semi-finished products); plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

The contested goods are the following:

Class 6: Metal conduit; Manually operated metal valves; Manifolds of metal for pipelines; Couplings of metal for tubing; Clips of metal for tubes; Casings of metal for oilwells; Check valves of metal [other than parts of machines]; Aluminum composite tubing for use in the manufacture of bicycle frames; Adaptors for pipes [metal]; Pipe extensions of metal; Pipe fittings [junctions] of metal; Pipe jackets of metal; Metal tubes for industrial use; Metal tubes for gas; Tubes of nickel alloys; Valve assemblies of metal [other than parts of machines]; Valves of metal, other than parts of machines; Sluice gates made of metal; Pipes and tubes of metal; Materials of metal for railway construction; Railway switches; Extrusions of metal; Extruded aluminium sections; Edging strips of metal; Linings (Metal -) for ceilings; Lead strips for use on windows; Lintels of metal; Laths of metal; Metal cladding; Metal mouldings; Metal lattices; Metal panels; Profiled metal sections [semi-finished]; Plating metals; Porticos of metal; Adaptors for pipes [metal]; Bends (pipe -) of metal [other than parts of machines]; Branching pipes of metal; Branching pipes of metal including those from alloy steel and titanium; Branching tubes of metal for pipelines; Cable ducts made of metal [other than electricity]; Clips of metal for cables and pipes; Drill pipes of metal; Drainage pipes of metal; Drain traps [valves] of metal; Ducting conduits (Non-electric -) of metal; Flanged pipes of metal; Gutter pipes of metal; Metal conduit; Elbow outlets of metal; Junctions of metal for pipes including those from alloy steel and titanium; Junctions of metal for pipes; Water-pipes of metal; Pipes of metal including those from alloy steel and titanium; Valves of metal other than parts of machines including those from alloy steel and titanium; Flexible tubes of metal; Bannisters of metal; Bicycle sheds [structures] of metal; Props of metal; Alloys of metal; Alloys of metal containing calcium and aluminium; Alloys of metal for use in casting; Aluminium; Aluminium alloy ingots; Aluminium and its alloys; Aluminium discs; Aluminium ingots; Anodised metals; Bars made of titanium; Bauxite reinforced aluminium alloys; Bauxite reinforced aluminium; Casting alloys; Filings of metal; Ingots of common metal; Discs (Metal -); Common metals and their alloys including stainless steel; Common metals, unwrought and semi-worked, for further manufacture; Common metals, unwrought or semi-wrought; Common metals and their alloys; Magnesium; Magnesium alloy ingots; Magnesium and its alloys; Magnesium ingots; Manganese; Manganese ores; Metal alloys for further manufacturing; Metal bars for further manufacture; Nickel; Nickel alloy ingots; Non-ferrous metals; Non-ferrous metals and their alloys; Metals; Metal sheet, strip and coil; Metal slugs; Metal tapes; Metals in powder form; Metal billets; Metal foil; Metal forgings; Flux coated metal rods; Sheets of aluminium; Sheets and plates of metal; Rods of metal; Raw base metals; Titanium; Titanium alloy ingots; Titanium and its alloys; Titanium unwrought or semi-wrought; Tin bars; Tin and its alloys; Tin alloy ingots; Tin; Tin ingots; Tin bars in coil; Tin ores; Wrought common metals; Zinc alloy ingots; Zinc ingots; Zinc and its alloys; Zinc ores; Zinc; Zinc-coated steel sheets; Aluminium frames; Aluminium doors; Armoured doors of metal; Casement windows of metal; Blinds of metal; Blinds of metal for external use; Catches (Window -) of metal; Catches (Door -) of metal; Door flaps of metal; Door chains of metal; Aluminium windows; Entrances of metal; Espagnolette mechanisms of metal; Escutcheons of metal; Finger plates of metal; Fittings of metal for windows; Latches (Metal -) being fittings for windows; Latches (Metal -) being fittings for doors; Latch bars of metal; Latches of metal; Metal door frames; Metal components for doors; Bicycle locks; Hasps of metal; Key blanks of metal; Casings of metal; Aluminium moulds; Ingot moulds of metal for castings; Extruded aluminium sections; Metal goods for use in construction.

Class 12: Aeronautical apparatus, machines and appliances; Propeller airplanes; Airplanes and structural parts therefor; Bodies for aircraft; Airplane propellers; Automobile chains [driving]; Automobile chains; Automobiles and structural parts therefor; Automotive interior trim; Axle boot kits for use with land vehicles; Axle assemblies for vehicles; Bicycle training wheels; Bicycle racks for vehicles; Brakes for motor cars; Brakes [bicycle parts]; Brakes for bicycles, cycles; Brakes for land vehicles; Brake pads for automobiles; Brake pads for land vehicles; Brake pedals [parts of motorcycles]; Brake levers for cycles; Brake levers for vehicles; Brake linings for land vehicles; Brake linings for motor cars; Chains for bicycles, cycles; Chains for driving motorcycles; Chains for driving road vehicles; Chains [bicycle parts]; Clutch mechanisms for motor cars; Clutch levers for land vehicles; Clutches for land vehicles; Clutch cylinders for land vehicles; Clutch cables [parts of motorcycles]; Clutch disks for land vehicles; Clutch disks, other than for land vehicles; Cycle hubs; Cycle mudguards; Differential transmissions for land vehicles; Differentials [land vehicle parts]; Differentials for land vehicles; Discs for clutch thrust bearings of land vehicles; Disk wheels [bicycle parts]; Double clutch transmissions for land vehicles; Double clutch transmissions, other than for land vehicles; Forks [bicycle parts]; Fork crown covers [bicycle parts]; Fork dust boots [parts of motorcycles]; Front end hubs for vehicles; Front fork joints [bicycle parts]; Front spacers [parts of motorcycles]; Handle bar control levers [parts of motorcycles]; Handle bar dampers [parts of motorcycles]; Handle bar ends [bicycle parts]; Handle bar grips [parts of motorcycles]; Handle bar stems [bicycle parts]; Handle bars [parts of motorcycles]; Handle bars for bicycles, cycles; Handlebars [bicycle parts]; Handlebars; Handlebar controls for mopeds; Link chains for driving purposes [for land vehicles]; Idler arms [vehicle parts]; Hydraulic clutches for land vehicles; Pedals for cycles; Rolling gearings for land vehicles; Reversing gears [for land vehicles]; Rear multistage sprockets; Rear hubs; Structural parts of bicycles; Stands for motorcycles; Stands for bicycles [parts of]; Trailer axles; Trailer chassis for vehicles; Trailer hitches for vehicles; Trailer supports; Trailer tents; Tow bars; Wheel arch extensions; Wheel spacers; Wheel sprockets; Wheels [land vehicle parts]; Aircraft landing wheels; Automobile spare wheel holders; Automobile chains [anti-skid for wheels]; Anti-skid chains; Casters [wheels] for vehicles; Hub caps; Hubs for vehicle wheels; Hubs for vehicle wheels (motorcycles); Inner tubes [for aircraft wheel tires]; Hand pumps for inflating vehicle tyres; Friction wheels for land vehicles; Freewheels for land vehicles; Crown wheels being parts of land vehicles; Foot pumps for inflating vehicle tyres; Rear wheel sprockets; Pneumatic inner tubes for vehicle wheels; Lug nuts for vehicle wheels; Jockey wheels for vehicles; Inner tubes for the wheels of forestry vehicles; Ornamental wheel covers for vehicles; Ornamental hub caps for vehicles; Metal studs for vehicle tyres; Inner tubes for pneumatic tyres for vehicle wheels; Spoke clips for wheels; Spokes for bicycles, cycles; Sprockets for motorcycle drives; Sprockets for racing kart gearing; Rolling wheels for vehicles; Rims for wheels of bicycles, cycles; Rims for vehicle wheels; Wheels; Wheel trims; Wheel hubs; Wheel covers [for vehicles]; Vehicle wheel spokes; Wheel rims [for automobiles]; Wheels for aircraft; Wheels for bicycles, cycles; Wheels for motorcycles; Wheels for land vehicles; Wheels for racing karts; Wheels for supermarket trolleys; Bicycle training wheels; Axles [land vehicle parts]; Brake rotors [parts of motorcycles]; Brake segments for motor cars; Brake rotors for land vehicles; Chainguards for vehicles; Chainwheels for land vehicles; Dress guards for bicycles, cycles; Direction indicators for bicycles; Direction signals for vehicles; Frames for bicycles, cycles; Hardtops [roofs] for vehicles; Gears for cycles; Gears for vehicles; Hydraulic rim brakes; Kickstands for motorcycles; Hydraulic disc brakes; Hydraulic circuits for motor cars; Hydraulic couplings for land vehicles; Hydraulic couplings with integral dampers, for land vehicles; Mud flap brackets as structural parts of vehicles; Mud flap hangers; Mud flap hold-downs; Mud flap weights; Mud flap holders; Mud guards [land vehicle parts]; Steering wheels [vehicle parts]; Steering brakes; Tire snow chains [land vehicle parts]; Tire chains [land vehicle parts]; Wheel suspensions; Transmission gears for land vehicles; Transmission mechanisms, for land vehicles; Transmission shafts for land vehicles; Transmissions [land vehicle parts]; Transmissions, for land vehicles; Transmission chains for land vehicles; Axles for vehicles; Axle journals; Brake drums for vehicles; Brake facings; Brake facings for vehicles; Brake hardware for vehicles; Brake pads for vehicles; Brake parts (Vehicle -) made of materials having frictional properties; Brake sets for vehicles; Brakes for vehicles; Braking systems for vehicles and parts thereof; Braking systems for vehicles; Brake blocks for vehicles; Brake cables for vehicles; Brake cylinders for vehicles; Brake drums; Disc brakes; Disc brake rotors for vehicle braking systems; Disc brake pads for vehicles; Disc brake friction pads for vehicle braking systems; Gear lever knobs for vehicles; Consoles being parts of vehicle interiors; Connecting rods for land vehicles, other than parts of motors and engines; Components for brakes for vehicles; Modular chassis systems for vehicles; Monocoque structures for vehicles; Main brake cylinders; Suspension struts for vehicles; Suspension struts [vehicle parts]; Suspension shock absorbers for vehicles; Suspensions for vehicles; Wheel brakes; Wheel cylinders for vehicles; Propeller spinners; Propellers for air vehicles.

Class 17: Injection mould for auto motor parts; Semi-processed brake linings; Clutch linings; Brake lining materials, partly processed; Semi-processed vehicle brake lining sheet stock; Molds (Ebonite -); Injection mould for auto motor parts.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods 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 assumed to be identical are directed at public at large and at a professional public with specific professional knowledge or expertise. The degree of attention may vary from average to high depending on their price, technical complexity and frequency of purchase.

3. The signs

BMW	smw
Earlier trade mark	Contested sign

The relevant territory is the 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).

The earlier mark is a word mark composed of three letters, ‘B’, ‘M’ and ‘W’. The contested sign is a word sign made up of three letters, ‘s’, ‘m’ and ‘w’.

Neither of the signs has a meaning for the relevant public in relation to the relevant goods; therefore, they are distinctive.

Visually and aurally, the signs coincide in two out of three letters, ‘m’ and ‘w’, and differ in their first letters (‘B’ in the earlier mark versus ‘s’ in the contested sign) and their respective sounds.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. Account is also taken of the fact that 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, taking into account that there is no visual or phonetic similarity between the initial letters ‘B’ and ‘s’, the signs are visually and aurally similar to a low degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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 (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

5. Global assessment, other arguments and conclusion

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/services covered are from the same or economically linked undertakings.

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).

The Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, 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, § 18).

In the present case, the goods are assumed to be identical. The signs are visually and aurally similar to a low degree, with no conceptual meaning in either case.

The signs in dispute both have three letters; both are, consequently, short marks and the fact that they differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. The differing letters are placed at the beginnings of the signs and they are not phonetically or visually similar. Consequently, the fact that the signs coincide in the last two letters does not by itself lead to a finding of likelihood of confusion and the Opposition Division considers that the relevant public, displaying an average to high degree of attention, will be able to safely distinguish the signs (23/10/2002, T-388/00, ELS, EU:T:2002:260, by analogy).

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

Likewise, even assuming that the earlier mark enjoys enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same, given that the differing letters at the beginning of the signs have a sufficient impact on the overall visual and aural impression of the signs to allow the consumers to safely distinguish the signs. Therefore, it is not necessary to examine the evidence of extensive use.

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 applicants 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 applicants are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicants did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Zuzanna STOJKOWICZ

Birgit Holst FILTENBORG

Ioana MOISESCU

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.