OPPOSITION DIVISION

OPPOSITION No B 2 685 553

Bayerische Motoren Werke Aktiengesellschaft, Petuelring 130, 80809 München,

Germany (opponent)

a g a i n s t

Nissan Jidosha Kabushiki Kaisha (also trading as Nissan Motor Co., Ltd.), No. 2,

Takara-cho, Kanagawa-ku, Yokohama-shi, Kanagawa-ken, Japan (applicant),

represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European

Union trade mark application No 14 949 796 ‘EMPOWER THE DRIVE’ (word). The

opposition is based on the following earlier trade marks:

(i) international trade mark registration No 677 211 ‘M Power’ (word), designating

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(vi)SpanishtrademarkregistrationNo 1 043 376

(figurative).

The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

According to Article 76 (1) EUTMR (in the version in force at the time of

commencement of the adversarial part, now Article 95(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

opportunity to submit 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 (in the version in force at the time of

commencement of the adversarial part), within the period referred to above, the

opposing party must also file evidence 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 that is not a

European Union trade mark, the opposing party must submit a copy of the relevant

According to Rule 19(3) EUTMIR (in the version in force at the time of

commencement of the adversarial part), 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.

According to Rule 98(1) EUTMIR (in the version in force at the time of

commencement of the adversarial part), when a translation of a document is to be

filed, the translation must identify the document to which it refers and reproduce the

structure and contents of the original document.

For the reasons explained below, the evidence mentioned below is not sufficient to

Decision on Opposition No B 2 685 553 page: 3 of 10

(iv) Swedish trade mark registration No 196 604; and

(v) Spanish trade mark registration No 1 043 376.

On 20/10/2016 the opponent filed evidence to substantiate its earlier rights. The

evidence submitted regarding the above-listed earlier rights consists of registration

certificates and renewal certificates issued by the registration offices in their

respective languages (the one regarding the international registration is in French).

Additionally, the opponent has submitted copies of those certificates with directly

inserted English translations of specific parts. However, these documents do not

meet the requirements set in Rule 98(1) EUTMIR (in the version in force at the time

of commencement of the adversarial part).

is only a reference saying ‘please see translation in the typesetting’.

It is true that information on the goods and services of the earlier marks was provided

in the statement of grounds, submitted by the opponent. However, 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) amounts to a valid translation of a registration document,

such as a registration certificate, even where such indications have been accepted

for admissibility purposes. When translation of an extract or a certificate of

registration of a trade mark is submitted, it should be identical in structure to the

document being translated and should include translation of all included data.

account.

According to Rule 20(1) EUTMIR (in the version in force at the time of

commencement of the adversarial part), if until expiry of the period referred to in

Rule 19(1) EUTMIR (in the version in force at the time of commencement of the

adversarial part), 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.

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been submitted only regarding the UK trade mark registration No 2 139 247, it is only

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this

point, the Opposition Division does not consider it appropriate to undertake an

assessment of the evidence of use submitted. The examination of the opposition will

proceed as if genuine use of the earlier mark had been proven for all the goods and

services invoked, which is the best light in which the opponent’s case can be

considered.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

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

Class 7: Motors and engines (except for land vehicles); machine coupling and

transmission components (except for land vehicles); parts and fittings for all the

aforesaid goods.

aforesaid goods.

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The contested goods and services are the following:

parts thereof.

Class 35: Motor vehicles dealership services.

Class 37: Motor vehicle repair and maintenance services.

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 to a broader category, is exclusive and

restricts the scope of protection only to the goods and services specifically listed.

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.

sport utility vehicles, are included in the broad category of parts and fittings for all the

aforesaid goods of the opponent’s mark, since the latter goods include inter alia parts

for motor land vehicles. Therefore, they are identical.

Contested services in Class 35

Dealership services are a broad term that include retail services of an authorised

establishment, offering and selling to end consumers the goods of a particular

manufacturer. Accordingly, they are considered similar to a low degree to motor land

vehicles. In particular, motor vehicles are a broad category that includes motor land

vehicles, i.e. both types of goods are identical. Although the nature, purpose and

repair and maintenance of vehicles, since the opponent’s services are a broad

category that covers repair and maintenance of all types of vehicles, motor vehicles

including.

b) Relevant public — degree of attention

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be borne in mind that the average consumer’s degree of attention is likely to vary

degree are directed at the public at large.

The public’s degree of attentiveness may vary from average to high, depending on

different factors, such as the price, specialised nature, safety concerns, terms and

conditions of the goods and services purchased, etc.

The opponent contends that the goods in question are daily consumption goods and,

therefore, the attention of the public is average. The Opposition Division does not

concur. Motor vehicles and parts thereof are not goods purchased on a daily basis.

On the contrary, these goods are purchased very infrequently (because of their high

price in the case of vehicles and since they are not regularly needed in the case with

spare parts).

Taking into consideration the price of motor vehicles, consumers are likely to pay a

Having in mind that the spare parts are as a rule of importance for the proper

functioning of motor vehicles and also serve to ensure the safety of the vehicle users,

even though not all spare parts are costly, consumers show a higher degree of

attention when purchasing such goods. The same reasoning applies in relation to the

selection of maintenance and repair services for motor vehicles, because the quality

of those services is essential for the proper functioning of the motor vehicles. Safety

concerns are also relevant when purchasing such services.

As for the services in Class 35, considering these are specialised services that

include retail services to end customers, where the goods offered and sold are

M Power EMPOWER THE DRIVE

The relevant territory is the United Kingdom.

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The global appreciation of the visual, aural or conceptual similarity of the marks in

Sabèl, EU:C:1997:528, § 23).

The element ‘M’ of the earlier mark will not create any associations in relation to the

meaning of ‘physical or mental strength; might; vigour, energy; effectiveness’ (Oxford

English Dictionary). In addition, in the motor vehicles sector, the ‘engine power’ or

‘horse power’ is among the important technical characteristics of a vehicle, since it

indicates the maximum power of a vehicle’s engine. In view of this, ‘POWER’ of the

earlier sign, when considered in relation with the goods at question (Class 12), will be

weak as to strength, power of the motor vehicle, which is among the important

characteristics of these goods. Accordingly, ‘POWER’ of the earlier sign will be of

reduced distinctiveness in relation to these goods. As for the relevant services, they

are related to motor vehicles. In this context and having in mind the connotations

‘POWER’ evokes, it is considered that the distinctiveness of this element in relation to

these services will also be lesser than average. This is because it is likely to be

perceived as alluding to the quality of the services in question (strengthen the motor

vehicle, make the motor vehicle more effective) or the characteristics of the goods

subject to the services.

distinctiveness will not be lower than that of ‘POWER’ of the contested mark. ‘THE’ is

the definite article in English and stands to define ‘DRIVE’. Therefore, it does not

have an independent role in the perception of the sign. Finally, in view of one of the

meanings of ‘DRIVE’, i.e. ‘an act of driving in a vehicle’ (Oxford English Dictionary),

the word will be allusive in relation to the goods and services in question and as such

– of reduced distinctiveness.

Separately, it should be noted that the expression ‘EMPOWER THE DRIVE’ as a

whole creates a concept and a logical unit that is distinct from those of its individual

components (12/12/2002, T-110/01, HUBERT, ECLI:EU:T:2002:318, § 57;

08/12/2011, T-586/10, ONLY GIVENCHY, ECLI:EU:T:2011:722, § 39). ‘EMPOWER

assessment in this respect cannot be made.

Visually, for word marks the comparison is based on an analysis of the number and

sequence of the letters/characters, the position of the coinciding letters/characters,

number of words and the structure of the signs (e.g. whether word elements are

separated or hyphenated).

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In the present case the signs coincide in ‘POWER’, which is one of the elements of

is composed of the elements ‘M POWER’ and the first word element of the contested

‘POWER’, it is not likely that consumers will break down a three-syllable meaningful

earlier mark is a letter, (ii) that the combination ‘M Power’ does not bring connotations

different from its meaningful part ‘POWER’ and (iii) ‘EM’ in ‘EMPOWER’ is a common

prefix in English, which will not be dissected by consumers. Moreover, there is

nothing in the way the letters in ‘EMPOWER’ are arranged, that will make consumers

break it down into ‘E-M-POWER’ (12/11/2014, C-524/11, LOVOL,

ECLI:EU:T:2014:944, § 31).

In view of the foregoing, on a visual level it is considered that the coincidence in the

signs that will be noticed by consumers is in ‘POWER’, contained in ‘EMPOWER’ of

the contested sign and representing one of the elements in the earlier sign.

The contested sign is significantly longer than the earlier mark – the earlier mark is

composed of six letters, while the contested one of fifteen letters. They differ in ‘EM’,

which are the first two letters of ‘EMPOWER’ and ‘THE DRIVE’ in the contested sign,

case, as said above, the earlier sign taken as a whole is a short slogan, representing

a lexical unit, which is likely to be perceived as a whole. Therefore, it is unlikely that

consumers, who are UK consumers, will disregard part of the expression and focus

only on its first word.

In the light of the foregoing, it is considered that the identified coincidence in five

letters in the same sequence, which letters represent the second word element in the

earlier mark and the second part of the first word in the contested sign, are not

sufficient to outweigh the differences in them. Therefore, the signs are considered

visually similar to a very low degree

Conceptually, reference is made to the previous assertions concerning the semantic

content conveyed by the marks. As the signs will be associated with dissimilar

meanings, the signs are conceptually not similar.

As the signs have been found similar in at least one aspect of the comparison, the

examination of likelihood of confusion will proceed.

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The distinctiveness of the earlier mark is one of the factors to be taken into account

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.

e) Global assessment, other arguments and conclusion

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).

(29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

Further, the goods and services have been found to be identical or similar to a low

degree. The relevant public is partially the public at large and partially business

customers, who show a higher degree of attention when selecting the goods and

services in question. The signs have been established to be aurally similar to an

average degree, visually similar to a very low degree and conceptually not similar.

Considering all the above, and upon taking into account the principle of

interdependence of the relevant factors, the coincidence in ‘POWER’ is not sufficient

to lead to a likelihood of confusion on the part of the public. It is duly noted that the

similarity and conceptual dissimilarity between the signs (11/07/2006, T-247/03, Torre

Muga, ECLI:EU:T:2006:198, § 71-72).

The relevant goods and services are of a nature that before making a purchase, the

consumer also visually selects them. In other words, the visual comparison, if not of

major impact, is at least equally relevant as the aural one (22/03/2011, T-486/07, CA,

EU:T:2011:104, § 93). Moreover, in the case of meaningful expressions, the

conceptual aspect of comparison of the signs is also of relevance.