CANCELLATION No 11 731 C (INVALIDITY)

Bayerische Motoren Werke Aktiengesellschaft, Petuelring 130, 80809 Munich, Germany, (applicant), represented by Christian Käser (Bayerische Motoren Werke Aktiengesellschaft), 80788 Munich, Germany (employee representative)

a g a i n s t

vannetukku.fi Oy, Kivirannantie 9, PL 19, 74101 Iisalmi, Finland (EUTM proprietor), represented by Veli Lahti, Manneheimintie 12 B, 00100 Helsinki, Finland (professional representative).

On 01/03/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is rejected in its entirety.

2.        The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 12 753 497. The application is based on international trade mark registration No 1 210 187 designating the European Union. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) and Article 8(5) EUTMR.

I.        SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that ‘as far as the contested trade mark covers goods of class 12, there exists a likelihood of confusion with the Applicant’s earlier mark.’ In relation to the goods in Class 12 the applicant concludes that since they are either identical or highly similar and are offered via the same sales channels, namely vehicle dealerships, there is a high competition between the products. The applicant then proceeds with analysis of the similarity of the signs by also touching on their distinctive and dominant elements and finds them visually highly similar and conceptually identical.

The applicant argues further that ‘as far as the contested trade mark covers services in class 35’, it should be declared invalid on the ground that it takes unfair advantage of the repute of the earlier mark. In support of its claim the applicant refers to the high similarity of signs already established and states that the contested trade mark is registered for services of class 35 which are not similar to those for which the earlier mark is registered and that the earlier mark has reputation in the European Union.

In relation to the requisites of Article 8(5) EUTMR the applicant puts forward that the contested EUTM causes detriment to and takes unfair advantage of the repute of the earlier trade mark. The applicant states that the public will make an association between the two trade marks on the basis of their high similarity. The distinctiveness of the earlier mark would be detrimentally affected because the public ceases to associate it with a given range of goods or services originating from a single source and starts associating it with different goods and services. According to the applicant the contested sign weakens the distinctiveness of the earlier mark significantly as it diminishes its attractiveness and devalues the image it has acquired among the public. The applicant implies further that such an association will dilute the earlier mark’s ability to identify a single undertaking and is likely to diminish its capacity to stimulate the desire of the public to buy the products for which it is registered. The applicant concludes that the trust in and respect for products sold under the earlier mark is lastingly damaged and the trade mark is no longer capable of evoking an immediate association with the products it covers.

The applicant brings forward also the argument that the EUTM proprietor seeks to ride on the coat-tails of the earlier mark’s reputation by using the contested sign in order to benefit from the power of attraction and the prestige of that mark, without paying any financial compensation for the marketing effort expended by the applicant in order to create and maintain the mark’s image. According to the applicant this should be considered to be an advantage taken unfairly of the reputation of the earlier mark.

Finally, the applicant states that in the absence of any indications for an apparent justification for the EUTM proprietor’s acts, the lack of due cause must be generally presumed.        

In support of its claims, the applicant filed evidence which will be listed and examined further down in the decision.

In its observations in reply the EUTM proprietor argues that first of all the applicant compared the marks in a misleading way by dissecting the contested sign and comparing only its figurative part without taking into account its verbal elements. The EUTM proprietor claims that the verbal elements ‘BLAUKREUZ WHEELS’ have been intentionally ignored by the applicant and that the way the applicant presents its arguments is not appropriate. Based on the above the EUTM proprietor requests the Office to reject the application and order the applicant to bear the costs.

After this statement the EUTM proprietor proceeds with analysis of the distinctive and dominant elements of the marks in conflict, describes what their separate elements represent and outlines the differences between them. In support of its finding that there is no likelihood of confusion between the marks the EUTM proprietor refers to a decision of the Finnish Patent and Registration Office which allegedly states that there is no likelihood of confusion between the marks subject to the current proceedings. The EUTM proprietor concludes that due to the different overall impression between the marks the public shall not be confused as to the origin of goods and services of the EUTM proprietor and the applicant. Finally, the applicant requests ‘that application shall be accepted in its entirety and the opponent shall be ordered to bear all the costs.’

In support of its observations, the EUTM proprietor filed a document – allegedly a decision of the Finnish Patent Office. The document is in Finnish and is not accompanied by a translation in the language of proceedings.

In the final round of observations the applicant reiterates its claim that the contested EUTM has to be declared invalid because there exists a likelihood of confusion with the applicant’s earlier trade mark. The applicant proceeds with analysing the importance and the impact of the verbal element ‘BLAUKREUZ WHEELS’ for the comparison of signs, particularly alleging that they are ‘not all distinctive’ since they do not add anything to the graphic of the sign. The applicant explains the meaning of the verbal elements and finds that they merely describe the shape and colour of the graphical element, namely a wheel having a blue cross in the middle. Therefore, according to the applicant, the verbal elements can be disregarded.

The applicant alleges further in its submission that the EUTM proprietor’s sign bears evidence of bad faith in itself.

Finally, the applicant comments on the relevance of the decision of the Finnish Patent and Registration Office stating that it is only valid for the national Finnish trade marks and does not extend to European trade marks since the two offices do not compete.

The EUTM proprietor submits final observations in reply reiterating basically its arguments already expressed in the previous round of observations, namely that the marks are not visually, aurally or conceptually similar and that due to their different overall impression the public shall not be confused as to the origin of the goods and services. The EUTM proprietor requests the Office to reject the application and to order the applicant to bear the costs.

II.         PRELIMINARY REMARK

The applicant invoked as grounds for the application of invalidity Article 53(1)(a) EUTMR in connection with Article 8(1)(b) and 8(5) EUTMR by checking the relevant boxes in the application form. In the field ‘Explanation of grounds and other remarks’ the applicant specified that the challenged EUTM is highly similar to the earlier mark and both marks cover identical goods in Class 12 and similar services in Class 35. Following this statement, the ground of Article 8(1)(b) EUTMR is referred to in brackets. It is further stated that the challenged trade mark takes unfair advantage of the distinctive character and the repute of the earlier mark with regard to some services in Class 35. After this statement the ground of Article 8(5) EUTMR is referred to in brackets.

In its submissions indicating the facts, evidence and arguments in support of the grounds on which the application is based (Point 3. of the submissions), the applicant claims in section a) called ‘Likelihood of confusion, Article 53(1)(a) EUTMR in connection with Article 8(1)(b), 2(a)(iii) EUTMR’ that as far as the contested trade mark covers goods in Class 12, there exists a likelihood of confusion with the earlier mark. Further in this section of the submissions the applicant compares the goods in Class 12 covered by both marks. Based on the analysis of the similarity of signs the applicant finds that there exists a likelihood of confusion between them.

In section b) called ‘Unfair advantage of repute, Article 53(1)(a) EUTMR in connection with Article 8(2)(a)(iii), (5) EUTMR’ the applicant claims that as far as the contested mark covers services in Class 35, it should be declared invalid on the ground that it takes unfair advantage of the repute of the earlier mark.

It can be clearly inferred from the content of the application and the submissions of the applicant that the ground of Article 8(5) EUTMR has been invoked only in relation to the contested services in Class 35.

As far as the ground of Article 8(1)(b) EUTMR is concerned it is not absolutely clear since at least in the application form it seems that the ground was invoked in relation to the goods in Class 12 and in relation to the services in Class 35 although later on in the submissions with further facts and arguments the applicant explicitly states that the services covered in Class 35 are not similar to the goods and services for which the earlier mark is registered (Classes 12, 37, 41).

Therefore, in order not to prejudice the rights of the applicant because of the ambiguous scope of the application for invalidity as far as it is based on the ground of Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR, the Cancellation Division will consider it as directed against all the goods and services of the contested EUTM. This approach will nevertheless, not prejudice rights of the EUTM proprietor as will be evidenced below. As far as the ground of Article 53(1)(a) EUTMR in connection with Article 8(5) EUTMR is concerned, it is clear that it has only been invoked in relation to the contested services in Class 35.

III.        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.

1. The goods and services

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 and services on which the application is based are the following:

Class 12:        Motor vehicles, including parts and accessories for motor vehicles.

Class 37:        Repair services for vehicles, repair services for heating devices, repair services for metal processing machinery and apparatus, repair services for burglar alarms, repair services for electrical installation, repair services for communication apparatus and equipment, repair services for electronic machines, repair services for wire cables, repair services for tires, tubes for tires.

Class 41:        Arranging of performances, hiring of decoration for performances, sound recordings rental services, private tuition, providing sports facilities, providing recreational facilities, amusement park services, processing of cinematographic films in connection with film production, publication of texts, translation services, discotheque services, nightclub services, cabarets services, karaoke bar services, provision of facilities for entertainment, entertainment services.

The contested goods and services are the following:

Class 12:        Vehicles; Passenger carrying vehicles; Industrial vehicles; Electric vehicles; Refrigerated vehicles; Trolleys [vehicles]; Wheeled vehicles; Vehicles for use on land; Industrial land vehicles; Vehicles and conveyances; Motor land vehicles; Vehicles fitted with living accommodation; Vehicles adapted for the disabled; Vehicles for animal transport; Truck campers [recreational vehicles]; Land vehicles and conveyances; Freight carrying vehicles; Vehicles for the physically handicapped and those of reduced mobility.

Class 35:        Advertising; Advertising; Advertising; Graphic advertising services; Preparation of advertising material; Advertisement via mobile phone networks; Advertising, including on-line advertising on a computer network; Advertising and marketing; Advertising and marketing; Publicity and sales promotion services; Preparation of publicity documents; On-line advertising on a computer network; Advertising; Information services relating to advertising; Advertising services relating to the sale of motor vehicles; Publicity and sales promotion services; Advertising services relating to newspapers; Provision of computerised advertising services; Prize draws (Organising of -) for promotional purposes; Arranging of demonstrations for advertising purposes; Production of sound recordings for advertising purposes; Arranging of presentations for advertising purposes; Window dressing services for advertising purposes; Distribution of samples; Arranging of demonstrations for advertising purposes; Production of video recordings for advertising purposes; Arranging of exhibitions for advertising purposes; Advertising through all public communication means; Promotion [advertising] of business; Advertising, marketing and promotional services; Advertisement for others on the Internet; Advertising; Advertising particularly services for the promotion of goods; Pay per click advertising; Provision of models for advertising; Advertising services relating to the recruitment of personnel; Advertising services relating to the sale of motor vehicles; Advertising services provided via a data base; Advertising services of a radio and television advertising agency; Updating of advertising information on a computer data base; Advertising services provided via the internet; Advertising services provided via the internet; Exhibitions for commercial or advertising purposes; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Advertising in periodicals, brochures and newspapers; Advertising relating to transport and delivery; Organisation of trade fairs for commercial or advertising purposes; Organisation of events for commercial and advertising purposes; Preparation and realization of media and advertising plans and concepts; Distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; Distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; Advertising, including promotion relating to the sale of articles and services for third parties by the transmission of advertising material and the dissemination of advertising messages on computer networks.

Contested goods in Class 12

The contested vehicles include as a broader category the applicant’s motor vehicles. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested Passenger carrying vehicles; Industrial vehicles; Electric vehicles; Refrigerated vehicles; Trolleys [vehicles]; Wheeled vehicles; Vehicles for use on land; Industrial land vehicles; Vehicles and conveyances; Motor land vehicles; Vehicles fitted with living accommodation; Vehicles adapted for the disabled; Vehicles for animal transport; Truck campers [recreational vehicles]; Land vehicles and conveyances; Freight carrying vehicles; Vehicles for the physically handicapped and those of reduced mobility are either included in or overlap with the applicant’s motor vehicles. Therefore, they are identical.

Contested services in Class 35

The contested services in Class 35 are services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods and services.

The goods and services covered by the earlier mark are vehicles and parts/accessories thereof (Class 12), repair services for various devices, machines and apparatus (Class 37), services rendered by persons or institutions in the development of the mental faculties of persons as well as services intended to entertain or to engage the attention. Even without going into much detail, it is obvious that the compared goods and services are clearly dissimilar (bearing in mind the relevant factors for the comparison specified above) since they do not have any criteria in common which taken separately or in combination can lead to a level of similarity between them.

It is to be noted that in its submissions the applicant itself found the contested services in Class 35 dissimilar to any and all the goods covered by the earlier mark.

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 services cannot be successful. The application request based on the grounds of Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR as far as directed against the services in Class 35 of the contested mark is, therefore, to be rejected at this stage of the examination. A possible finding of enhanced degree of distinctiveness of the earlier mark does not impact this decision, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 found to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention is high considering that the relevant goods are expensive and technically sophisticated.

3. The signs

Earlier trade mark	Contested trade mark

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, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark depicting an element comprising four equal parts resembling a pie or a pie chart, two of which are white and two are blue. The blue parts are in the diagonally opposite upper left and lower right corners. This element is surrounded by a thick black brim. In its upper part the letters ‘BMW’ are represented in a rather standard white typeface. Various shades of the black and blue colors create a noticeable three-dimensional impression of the whole sign.

The contested mark is a figurative mark comprising a representation of a cross depicted in dark blue almost black colour on a white background surrounded by a thick black brim and the verbal elements ‘BLAUKREUZ WHEELS’ in slightly stylised black typescript positioned beneath the figurative element.

The applicant’s argument that the verbal elements of the contested sign are to be disregarded in the comparison since they merely describe the figurative element of the contested sign cannot be sustained. The assessment of the applicant does not comply with the principles established by the case-law according to which the comparison must cover the signs in their entirety. Consequently, it is wrong not to compare elements of the signs just because they are, for example, smaller than other elements in the signs (unless they are negligible) or because they are non-distinctive (12/06/2007, C-334/05P, LIMONCHELO, EU:C:2007:333, § 41, 42, 13/12/2011, T-61/09, Schinken King, EU:T:2011:733, § 46).

Moreover as the Court observed, the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark (04/06/2013, T-514/11, BETWIN,EU:T:2013:291, §43).

What is also true, however, is that the perception of the meaning of the verbal elements may have an impact on their distinctiveness and hence, play a role when deciding on the level of similarity between the signs or the lack thereof.

The letters ‘BMW’ of the earlier mark will not be perceived with a particular meaning by part of the public. Another part of the public may see it as an abbreviation of the name of the trade mark owner, namely ‘(B)ayerische (M)otoren (W)erke’.

The verbal element ‘BLAUKREUZ’ will be understood by the German-speaking part of the public with the meaning of a ‘blue cross’. For the rest of the public it does not have any meaning. In any case, it is perfectly distinctive in relation to the relevant goods.

The verbal element ‘WHEELS’ will be perceived by the English speaking part of the public as the plural of the word ‘wheel’ meaning ‘a circular object which forms a part of a machine, usually a moving part’. Apart from the plural of a countable noun, the verbal element ‘WHEELS’ may be perceived as an informal word for ‘car’ (See the Collins Dictionary: https://www.collinsdictionary.com/dictionary/english/wheels, on 22/02/2017). That is, for this part of the public this element would be theoretically devoid of any distinctive character.

 

It is to be noted, however, that the verbal element ‘WHEELS’ cannot be seen only in relation to the goods separated from the remaining elements of the contested mark. This would be arbitrary and would not take into account the conceptual and visual context of the entire mark. In particular for English-speakers even though ‘WHEELS’ might be devoid of distinctive character in relation to the goods at hand as explained in the previous paragraph it sets a conceptual context against which the English speaking consumers will interpret the figurative element, namely a wheel – a combination of a tyre and a rim.

For the part of the public that will not associate the verbal element ‘WHEELS’ with any meaning, its distinctiveness is normal.

Although the first verbal element is in German and the second in English, it cannot be excluded that a part of the public will understand both elements. Nevertheless the combination of the two elements does not result in a meaning (meaningful expression) that goes beyond the meaning of the two elements taken separately.

All in all, the design and the verbal elements of the contested sign have their material role for the overall perception of the sign. Regardless of the possible perception of the meaning of the verbal elements they will not be disregarded, overlooked or otherwise totally neglected by the relevant consumer as implied by the applicant.

Neither of marks has elements which can be determined as dominant as compared to other elements.  

 

Visually, the signs coincide in the thick black circular brim surrounding the combination of white and blue equal pie pieces in the earlier and the cross in the contested sign. However, they differ in the figurative elements depicted inside the thick black brim. Furthermore, the signs differ in their verbal elements, namely ‘BMW’ versus ‘BLAUKREUZ WHEELS’. The signs differ also to the extent that the earlier mark creates a slight three-dimensional impression while the contested one is clearly two-dimensional.

It is to be noted in contrast to the applicant’s assertions that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Although the signs show certain similarities in their figurative elements, it is to be noted that they lie in a rather banal geometric form and colour such as the circular brim in black. Bearing in mind also the established case law practice referred to above, the signs are similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the three letters of the earlier mark being consonants will be pronounced as single letters from the respective alphabets, for instance ‘BE-EM-WE’ in German or ‘BI-EM- DOUBLE U’ in English, ‘BE-EME-UVE DOBLE’ in Spanish, etc. The verbal elements of the contested trade mark will be read and pronounced according to the pronunciation rules in each relevant language. Occasional coincidences in some of the pronounced sounds such as ‘B’ and ‘E’ cannot result in finding of oral similarity between the signs. Therefore, it is concluded that the signs are aurally dissimilar.

Conceptually, the signs will be perceived with the meanings explained above. There is no situation in which the relevant consumers may link the signs on conceptual level on behalf of the possible meaning of their verbal elements. Same is valid for their figurative elements – the figurative element of the contested sign represented within the thick black circular brim is clearly a cross (a perception which for the German speaking part of the public is further corroborated by the verbal element ‘BLAUKREUZ’), while the figurative element of the earlier sign represented within the thick black circular brim is just a combination of four simple geometric forms without a particular meaning. Moreover, the figurative element of the contested sign may be seen as a representation of a wheel (tyre and a rim), certainly by the English speaking part of the public. The thick black circular brim is a very simple, banal feature and the coincidence in this element cannot result in a conceptual similarity between the signs in conflict. All in all, 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.

According to the applicant, the earlier trade mark has a reputation in the European Union for all the goods and services for which it is registered, namely those specified in section III. a) above. 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). Seeing as it is relevant to the examination of the declaration of invalidity request further below, the Cancellation Division will also determine in this section whether the earlier mark is reputed.

Reputation implies a knowledge threshold which is only reached when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public. The evidence must also show that the reputation was acquired for the goods and services for which the applicant has claimed reputation, namely those specified in section III. a) above. In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The applicant submitted evidence to support this claim. As the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data. It is to be noted, nevertheless, that the documents provided as such do not have the character of confidential documents and have already been made public. The evidence consists of the following documents:

Annex 2        BMW Group Annual Report 2014 – a document originating from the applicant addressed to the shareholders and shareholders’ representatives showing sales volumes, turnovers and profits for the BMW Group as well as different aspects of the BMW Group business such as expansion of production facilities, specific issues related to different market segments such as motorcycles and car markets, employed personnel, etc.

Annex 3        European Vehicle Market Statistics, Pocketbook 2014 issued by the International Council on Clean Transportation (ICCT). According to the information provided in the document the sales volumes and market shares reached from 2001 to 2013 under the BMW trade mark alone vary from approximately 500 000 to 650 000 in average (3% to 5% market share).

Annex 4        A document representing a summary of survey results of a survey conducted by the applicant among 12 400 respondents in 16 EU countries for the period of 2013 – 2015. The survey shows the aided brand awareness in relation to the BMW logo reaches 90%.    

Annex 5        Global 500 2015 annual report on the world’s most valuable global brands prepared by the independent brand valuation and strategy consultancy ‘Brand Finance’® showing the BMW brand name under number 15 in the list of the top 500 most valuable brands for 2015.

Annex 6        Auto 100 & Tyres 10 2015 annual report on the world’s most valuable automobile brands prepared by the independent brand valuation and strategy consultancy ‘Brand Finance’® showing the BMW brand logo ranked second as most expensive brand for 2015.

Annex 7        The Global RepTrak® 100 study report on Consumer Perceptions of Companies in 15 countries prepared by the Reputation Institute showing BMW Group ranked as number one reputable company in the world. Brand strength is examined as a factor influencing the reputation of the companies. BMW group was ranked third based on company’s brands strength including the BMW logo as well as the ‘MINI’ and ‘Rolls Roys’ brands.

Having examined the material listed above, the Cancellation Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through use on the market. For the purposes of the examination further below, the Cancellation Division acknowledges also that the earlier mark acquired reputation.

The rankings (Annex 5 and 6) originating from a reputed third party not related to the applicant show that the BMW logo is among the most valuable brands in general and in particular for motor vehicles. Although the rankings measure the value of the marks and not directly the brand awareness, it is explained in the methodology applied in the process of preparation of the report that in order to determine the strength of a brand, an index is developed which takes into account the marketing investment, the goodwill accumulated with customers, staff and other stakeholders and the impact of those factors on business performance. That is to say that a significant component of the index which ranked the BMW logo among the most valuable brands is actually the marketing investment and the awareness of the brand among the relevant consumers, factors which are important by determining whether the trade mark acquired enhanced distinctiveness through use. The sales volumes varying from 500 000 to 650 000 cars (European market only) each year for the last almost fifteen years also speak in favour of an enhanced distinctiveness of the earlier mark acquired through extensive use (Annex 3).

Although other pieces of evidence do not bear a direct reference to the awareness of the particular brand among the relevant public (such as Annex 2 and Annex 7) but provide information related to the business activities and success of the trade mark owner, it is evident that the BMW brand together with two other brands is a major part of this success. When seen also in the light of the information that can be inferred from the other pieces of evidence analysed above, the reports provided in Annex 2 and Annex 7 support a finding of enhanced distinctiveness and reputation of the earlier mark acquired through extensive use.

It is to be noted, however, that this finding only applies to the goods in Class 12 ‘motor vehicles, including parts and accessories for motor vehicles’. It cannot be inferred from the submitted evidence that the earlier trade mark acquired enhanced distinctiveness and/or reputation for any of the services in Classes 37 and 41.          

5. Global assessment, other arguments and conclusion

The goods are identical. The degree of attention of the relevant public is high. The signs are only visually similar to the extent that they coincide in a rather banal feature – a simple geometric form represented in one of the most common colours, namely black, while orally and conceptually absolutely no similarity has been established, just to the opposite – significant differences have been established between the signs from an oral and conceptual perspective. The enhanced distinctiveness of the earlier mark has been acknowledged based on the submitted evidence showing that the earlier trade mark has acquired a certain level of recognition on the market for ‘motor vehicles, including parts and accessories for motor vehicles’.

Taking into account all the circumstances of the case, it must be concluded that the differences between the signs are clearly perceptible and safely counteract the similarities between them which are to be encountered in banal features such as the circular brim in black. There is no reason to believe that the relevant consumer showing in this case high degree of attention will erroneously believe that the goods (even if they are identical) bearing the marks in conflict originate from the same undertaking or from economically linked undertakings. This finding cannot be any different even taking into account the enhanced distinctiveness of the earlier mark.

Considering all the above, the Cancellation Division finds that there is no likelihood of confusion on the part of the public. Therefore, the cancellation application must be rejected as far as it is based on the grounds of Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR also in relation to the contested goods in Class 12. The examination proceeds based on the other ground invoked by the applicant, namely Article 53(1)(a) EUTMR in connection with Article 8(5) EUTMR against the services in Class 35.

IV.        REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

a)        The signs must be either identical or similar.

b)        The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

c)        Encroachment upon reputation: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41)However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared in section III c) of this decision. Reference is made to the findings in relation to the similarity of signs which are equally applicable to the current examination.

2. Reputation of the earlier trade mark

It has been already established that the earlier mark enjoys certain level of reputation in the European Union for motor vehicles including parts and accessories for motor vehicles.

3. The ‘link’ between the signs

In order to establish that a later trade mark will encroach upon the reputation of an earlier mark, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgment of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 3, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine, after all the factors relevant to the particular case have been assessed, whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of a likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (23/10/2003, C-408/01, Adidas, EU:C:2003:582, §  27, 29, 31; and 27/11/2008, C-252/07, Intel, EU:C:2008:655, §  57, 58, 66).

It is now apparent that the earlier mark is used and has a reputation in the European Union in relation to ‘motor vehicles including parts and accessories for motor vehicles’. It has also been established that the signs are only visually similar to some extent whereas the similarity lies in simple geometric form, namely the brim represented in the common black colour. No likelihood of confusion has been found between the signs. Another factor that has to be considered when examining whether the relevant consumers will establish a link between the signs is the proximity of the goods and services covered by the two marks.

The Court has held in the ‘Intel’ judgment mentioned above that the sections of the public relevant for each of the goods and services covered by the trade marks in dispute are a factor to be taken into account when considering whether the existence of a ‘link’ can be justified. As the Court has stressed, one factor when considering a link must be ‘the nature of the goods or services for which the conflicting marks were registered, including the degree of … dissimilarity between those goods or services, and the relevant section of the public’ (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42).

Therefore, before examining the applicant’s claims, the Cancellation Division finds it useful to note that the application for invalidity under Article 8(5) EUTMR is directed against the following services:

Class 35:        Advertising; Advertising; Advertising; Graphic advertising services; Preparation of advertising material; Advertisement via mobile phone networks; Advertising, including on-line advertising on a computer network; Advertising and marketing; Advertising and marketing; Publicity and sales promotion services; Preparation of publicity documents; On-line advertising on a computer network; Advertising; Information services relating to advertising; Advertising services relating to the sale of motor vehicles; Publicity and sales promotion services; Advertising services relating to newspapers; Provision of computerised advertising services; Prize draws (Organising of -) for promotional purposes; Arranging of demonstrations for advertising purposes; Production of sound recordings for advertising purposes; Arranging of presentations for advertising purposes; Window dressing services for advertising purposes; Distribution of samples; Arranging of demonstrations for advertising purposes; Production of video recordings for advertising purposes; Arranging of exhibitions for advertising purposes; Advertising through all public communication means; Promotion [advertising] of business; Advertising, marketing and promotional services; Advertisement for others on the Internet; Advertising; Advertising particularly services for the promotion of goods; Pay per click advertising; Provision of models for advertising; Advertising services relating to the recruitment of personnel; Advertising services relating to the sale of motor vehicles; Advertising services provided via a data base; Advertising services of a radio and television advertising agency; Updating of advertising information on a computer data base; Advertising services provided via the internet; Advertising services provided via the internet; Exhibitions for commercial or advertising purposes; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Advertising in periodicals, brochures and newspapers; Advertising relating to transport and delivery; Organisation of trade fairs for commercial or advertising purposes; Organisation of events for commercial and advertising purposes; Preparation and realization of media and advertising plans and concepts; Distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; Distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; Advertising, including promotion relating to the sale of articles and services for third parties by the transmission of advertising material and the dissemination of advertising messages on computer networks.

As seen above, the earlier trade mark was found to have a reputation only for motor vehicles, including parts and accessories for motor vehicles.

Each trade mark is directed at sectors of the public that overlap to some extent as far as sales of motor vehicles including parts and accessories thereof are directed at the public at large. Advertising services are provided by professionals to professionals in various sectors of economy concerning all kinds of goods and services. There is an overlap as far as the professionals providing advertising services are also relevant consumers of the applicant’s goods.

The Cancellation Division considers, however, that (even though a possible overlap of the relevant public cannot be completely excluded) the relevant consumer will not see any link between the signs if used in relation to the earlier goods with a reputation and the contested advertising services. Advertising services 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 might be used. These services are provided by advertising companies, which study their client’s needs, 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, websites, videos, the internet, etc. The nature and purpose of advertising services are fundamentally different from the manufacture of goods. Therefore, advertising services as such cannot be considered as showing any proximity to the goods being advertised from an economic perspective. This economic reality is reflected also in the minds of the consumers, especially these consumers that represent the overlapping part of the public in the present case, as explained above. All in all, the two economic sectors are so remote that the Cancellation Division finds it implausible that the consumer will perceive any link between the signs when used on these respective goods and services. In other words, given the large gap between goods and services in question, taking into account the low level of visual similarity between the signs, the lack of any aural and conceptual similarity, the lack of likelihood of confusion the relevant consumer will encounter the contested sign without making any mental connection with the earlier mark despite it being reputed for motor vehicles, including parts and accessories for motor vehicles.  

4. Conclusion

Therefore, taking into account and weighing up all the relevant factors of the case at hand, the Cancellation Division concludes that the relevant consumer will not make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the request for declaration of invalidity is not well founded under Article 8(5) EUTMR and must be rejected.

V.        COSTS

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

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

According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Ana MUÑIZ RODRIGUEZ

Plamen IVANOV

Judit NÉMETH

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 Cancellation 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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.