OPPOSITION No B 2 757 402

Continental Reifen Deutschland GmbH, Vahrenwalder Str. 9, 30165 Hannover, Germany (opponent), represented by Göhmann Rechtsanwälte Abogados Advokat Steuerberater Partnerschaft MBB, Landschaftstraße 6, 30159 Hannover, Germany (professional representative)

a g a i n s t

Interpart Impex, Place Marcel Broodthaers 8 BOITE 5, 1060 Bruxelles, Belgium (applicant),

On 13/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 757 402 is upheld for all the contested goods.

2.        European Union trade mark application No 15 487 259 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 487 259. The opposition is based on European Union trade mark registration No 11 564 838. 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

The goods on which the opposition is based are, inter alia, the following:

Class 4: Lubricants.

Class 12: Vehicles for transportation on land and/or on water.

The contested goods are the following:

Class 4: Lubricants.

Class 12: Vehicles and conveyances.

The contested goods in Class 4 are identically covered by the opponent´s list of goods in Class 4.

The contested goods in Class 12 Vehicles and conveyances cover, as broad categories, the opponent´s Vehicles for transportation on land and/or on water. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

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.

The public’s degree of attentiveness may vary from average to high, depending on the characteristics of the goods purchased. For instance, their price, the consequences of their use and the frequency of their purchase.

In the present case, the goods found to be identical are directed at the public at large and at professionals.

Lubricants can be purchased by all kinds of consumers and are not of particularly high prices. However, choosing one or another type can have consequences in the apparatus or machine it is used in relation to (e.g. a car´s motor). The attention paid by consumers during the purchase of these goods is deemed to vary from average to higher than average.

Vehicles and conveyances can be purchased by all kinds of consumers. However, they constitute infrequent and usually expensive purchases. The attention paid by consumers during their purchase is deemed to be higher than average. Some of the goods covered by these categories are, for instance, cars or boats.

Taking the cars as an example of the goods covered by this category, and considering the price of cars, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T-486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 39-42). As explained above, the attention paid by consumers during the purchase of these goods is deemed to be higher than average.

3. The signs

	INTERCONTINENTAL PARTS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In this case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, for whom all the verbal elements in the marks have a concept.

The earlier mark is formed by the word “Continental” and the side-on view of a black horse. The visual particularity of the verbal element resides in the stylised “C”, which embraces letter “o” inside it.

The term “Continental” is used in English as an adjective, to indicate that something or someone is situated on, or belongs to, a certain continent.

The earlier mark also conveys the concept of a horse.

The contested sign is formed by the verbal elements “INTERCONTINENTAL” and “PARTS”. The term “INTERCONTINENTAL” is used in English as an adjective to indicate that something is related to two continents (e.g. exists or happens between them). The word “PARTS” is used in English to refer to, inter alia, portions, pieces or sections.

The word “Continental” and the horse depiction in the earlier mark are of average distinctive character for the goods involved.

In the contested sign, the term “INTERCONTINENTAL” is of average distinctive character, whereas the word “PARTS” is of lower than average distinctive character, because it is allusive of the characteristics of the goods involved. For instance, it can be seen as indicating that the goods consist of, or are meant to be used in relation to, parts of goods (e.g. parts of vehicles).

The earlier mark is formed by the dominant element “Continental” and the less eye-catching horse depiction.

The contested sign has no element more dominant (visually eye-catching) than others.

Visually, the signs coincide in the sequence of letters “c-o-n-t-i-n-e-n-t-a-l”, forming the entire verbal element of the earlier mark, and part of the first element read in the contested sign (reading from left to right). Therefore, the only verbal element of the earlier mark is entirely contained in the contested sign.

The marks differ visually in typeface, in the horse depiction of the earlier mark, and in the sequences of letters “I-N-T-E-R” and “P-A-R-T-S” of the contested sign.

The depiction of a horse is the less visually eye-catching element of the earlier mark. The differing word “PARTS” constitutes an element of lower than average distinctive character. As such, the impact of these elements is reduced when assessing the similarity of the signs. In this same line, the coincidences between the marks are found in elements that are distinctive and, in the case of the earlier mark, also constitute the dominant element of the sign.

The signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters “c-o-n-t-i-n-e-n-t-a-l”, present identically in both signs. The coinciding sounds form the entire earlier mark, which is aurally entirely contained in the contested sign.

The pronunciation differs in the sound of the letters “i-n-t-e-r” and “p-a-r-t-s” of the contested sign.

The differing term “PARTS” has, as explained above, a reduced impact when assessing the similarity of the signs, due to its lower than average degree of distinctiveness.

The signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The terms “Continental” and “INTERCONTINENTAL” in the marks refer to the concept of continents, despite the fact that they do not do this in exactly the same way. The difference between them is that the term “Continental” in the earlier mark refers to one single continent, whereas the term “INTERCONTINENTAL” in the contested sign refers to more than one continent.

The signs also differ in the concepts of the horse of the earlier mark and in the concept of the word “PARTS” described above.

As explained above, “PARTS” has a reduced impact when assessing the similarity of the signs, due to its lower than average degree of distinctiveness.

According to the above, the signs are considered to be conceptually similar to at least an average degree.

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’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods at issue are identical.

The signs are visually, aurally and conceptually similar to at least an average degree.

The only verbal element of the earlier mark is entirely contained in the contested sign. In addition, the coincidences between the marks are found in elements considered to be of average distinctive character, and that coinciding part constitutes also the dominant element of the earlier mark.

The attention paid by consumers during the purchase of the goods in Class 4 is deemed to vary from average to higher than average, and the attention paid by consumers during the purchase of the goods in Class 12 is deemed to be higher than average.

The average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, and according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Based on that principle, the consumers might believe that the conflicting goods come from the same or economically-linked undertakings.

Also having regard to the principle of interdependence, it is considered that the coincidences between the signs, together with the identity of the goods, are clearly enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting goods come from the same or economically-liked undertakings.

Even if part of the public pays higher than average degree of attention during the purchase of some of the goods involved, the fact that the signs share significant similarities, together with the fact that similar signs cover identical goods, might lead consumers to think that the goods come from the same or economically-linked undertakings. Accordingly, even if the level of attention might be higher than average in relation to some of the goods involved, this will not be enough as to avoid such confusion and/or association under the present circumstances.

It must be also noted that it is conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion/association on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 564 838. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use or reputation, as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lucinda CARNEY

María del Carmen SUCH SANCHEZ

Richard BIANCHI

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.