OPPOSITION DIVISION
OPPOSITION No B 2 798 521
Autonics Corporation, 780-1, Banyeo 1-D. Haewoondae-Ku, Pussan, Republic of
Korea (opponent), represented by Durán-Corretjer, S.L.P., Còrsega, 329 (Pº de
Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)
a g a i n s t
Car Topic GmbH, Wiener Bundesstraße 8, 4060 Leonding, Austria (holder).
On 10/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 798 521 is partially upheld, namely for the following
contested goods:
Class 9: Apparatuses for recording, transmission or reproduction of sound
or images, especially radios, (loud-speakers, cabinets for
loudspeakers, sound amplifiers, antennas; electric cables, cable
clamps (electricity); batteries for motor vehicles, rechargers for
accumulators; fuses for motor vehicles (especially fuses for the
engine compartment and the interior light, ball fuses, lead fuses);
direction indicators (for motor vehicles); thermometer (not for
medical use); alarm devices or alarm system for motor vehicles
(anti-theft protection); handsfree set for (mobile) phones for motor
vehicles.
2. European Union trade mark application No 1 285 065 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 some of the goods of international
registration No 1 285 065 designating the European Union for the figurative mark
Decision on Opposition No B 2 798 521 page: 2 of 9
, namely against all the goods in Class 9. The opposition is based on,
inter alia, international registration No 879 705 designating Bulgaria, Cyprus, Greece,
Latvia, Lithuania and Romania. 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.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s international registration No 879 705 designating, inter alia, Romania.
a) The goods
The goods on which the opposition is based are the following:
Class 9: Photoelectric sensors, proximity sensors, optical fiber sensors, laser
sensors, optical fiber cables, color sensors, pressure sensors, flow sensors, vision
sensors, safety sensors, human body sensors, area sensors, ultrasonic sensors,
rotary encoders, temperature sensors, sensor controllers, panel meters,
amperemeters, voltmeters, wattmeters, tachometers, line speed meters, frequency
meters, counters, timers, power controllers, temperature controllers, humidity
controllers, display units, touch panel displays, recorders, power transducers,
apparatus for power supply, relays, cam switches, door sensors, remote I/O
(input/output) apparatus for use in the field bus systems; laser marking instrument.
The contested goods are the following:
Class 9: Apparatuses for recording, transmission or reproduction of sound or images,
especially radios, (loud-speakers, cabinets for loudspeakers, sound amplifiers,
antennas; electric cables, cable clamps (electricity); batteries for motor vehicles,
rechargers for accumulators; fuses for motor vehicles (especially fuses for the engine
compartment and the interior light, ball fuses, lead fuses); direction indicators (for
motor vehicles); thermometer (not for medical use); fire blankets; warning triangles
for vehicles; alarm devices or alarm system for motor vehicles (anti-theft protection);
handsfree set for (mobile)phones for motor vehicles.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘especially’, used in the applicant’s list of goods, indicates that the specific
goods are only examples of items included in the category and that protection is not
Decision on Opposition No B 2 798 521 page: 3 of 9
restricted to them. In other words, it introduces a non-exhaustive list of examples (for
use of the equivalent term, ‘in particular’, see 09/04/2003, T-224/01, Nu-Tride,
EU:T:2003:107).
As a preliminary remark, it is to be noted that, according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
The contested apparatuses for recording of sound or images, especially radios, loud-
speakers, cabinets for loudspeakers, sound amplifiers, antennas overlap with the
opponent’s recorders, which may refer to various recording apparatuses, such as
audio and video recorders. Therefore, the goods under comparison are identical.
The contested batteries for motor vehicles are devices used to provide a source of
electric current. Consequently, these goods are included in the broad category of, or
overlap with, the opponent’s apparatus for power supply. Therefore, they are
identical.
The contested electric cables and the opponent’s relays, cam switches have very
similar natures and purposes, as the contested goods are used for conducting
electricity, while the opponent’s goods are apparatus for switching electricity. The
goods under comparison have the same producers, relevant public and distribution
channels. Therefore, they are highly similar.
The contested apparatuses for transmission or reproduction of sound or images,
especially radios, (loud-speakers, cabinets for loudspeakers, sound amplifiers,
antennas; handsfree set for (mobile)phones for motor vehicles are sound and image
transmission and reproduction apparatuses. These goods are similar to the
opponent’s recorders, which include sound and image recorders. The goods under
comparison have the same purpose (that of treating sound and images) and the
same producers, distribution channels and relevant public. Therefore, they are
similar.
The contested cable clamps (electricity) are devices used to bundle and keep cables
in place, which can be used with both electricity and data cables. Consequently,
these goods are similar to the opponent’s optical fiber cables, as they are used
together and may be manufactured by the same producers, have the same
distribution points and target the same public.
The contested rechargers for accumulators and the opponent’s apparatus for power
supply have some points in common, as they have similar purposes and may be
manufactured by the same producers, have the same distribution points and target
the same public. Therefore, they are similar.
The contested fuses for motor vehicles (especially fuses for the engine compartment
and the interior light, ball fuses, lead fuses) are protective devices for safeguarding
electric circuits, containing a wire that melts and breaks the circuit when the current
exceeds a certain value. These goods have some points in common with the
opponent’s relays, cam switches, which are electromagnetic or electronic switching
Decision on Opposition No B 2 798 521 page: 4 of 9
devices activated by a signal and usually used to control a large current or activate
another device or circuit. The goods under comparison may have the same
producers, distribution channels and relevant public. Therefore, they are similar.
The opponent’s pressure sensors, door sensors are indispensable parts of most
alarm devices. Consequently, the contested alarm devices or alarm system for motor
vehicles (anti-theft protection) and the opponent’s pressure sensors, door sensors
have some points in common and may target the same consumers, who are likely to
think that the same or a related company is responsible for manufacturing these
goods (see, by analogy, 25/08/2016, R 2447/2015-2, PIT-RADWAR / PIT, § 25-26).
Therefore, they are similar to at least a low degree.
The contested thermometer (not for medical use) and the opponent’s panel meters,
amperemeters, voltmeters, wattmeters, tachometers, line speed meters, frequency
meters are all measuring devices. They may have the same producers and
distribution channels and target the same public. Therefore, they are similar.
The contested direction indicators (for motor vehicles) are devices that indicate
direction of movement or travel and are used in motor vehicles. These goods have
some points in common with the opponent’s tachometers, which refer to any device
for measuring speed, especially by measuring the rate of revolution of a shaft.
Tachometers (rev counters) are often fitted to cars to indicate the number of
revolutions per minute of the engine. The goods under comparison are signalling
devices with similar applications in motor vehicles and can have the same producers,
relevant public and distribution channels. Therefore, they are at least similar to a low
degree.
The remaining contested goods, namely fire blankets (large blanket-like pieces of
fire-resistant material such as fibreglass used in smothering a fire) and warning
triangles for vehicles (triangular red frames, made of reflective material, carried by
motorists to be set up on the road as a danger signal in case of a breakdown or other
hazard) are not sufficiently related to any of the opponent’s goods in Class 9, which
are essentially sensors and controllers, encoders, recorders, measuring devices,
optical fibre cables, display units, power supplies and switches, remote input/output
apparatus and laser marking instruments. The goods under comparison have
different natures, specific purposes and methods of use, and, although some of them
could be used, for example, in vehicles, this is not sufficient to render them similar.
They have different commercial origins and channels of trade and are not in
competition or strictly complementary. Therefore, they are dissimilar.
b) 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 or similar (to different degrees)
are directed partly at the public at large (e.g. cable clamps (electricity); apparatuses
for transmission or reproduction of sound or images in Class 9) and partly at
professional consumers with specific knowledge or expertise in, inter alia, the
automotive field (e.g. batteries for motor vehicles in Class 9).
Decision on Opposition No B 2 798 521 page: 5 of 9
The degree of attention may vary from average to higher than average, depending on
the specialised nature of the goods, the frequency of purchase and their price.
c) The signs
Earlier trade mark Contested sign
The relevant territory is Romania.
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).
Both marks are figurative. The earlier mark consists of the verbal element ‘Autonics’,
in rather standard bold title case letters. The contested sign contains the verbal
element ‘AUTONIK’ depicted diagonally in rather standard bold upper case letters.
Next to this element is a black hexagon containing a white incomplete triangle.
Neither of the marks has any elements that could be considered clearly more
dominant (visually eye-catching) than other elements.
The Court has held that, although average consumers normally perceive a mark as a
whole and do not proceed to analyse its various details, when perceiving a word sign,
they will break it down into elements which, for them, suggest a specific meaning or
which resemble words known to them (13/02/2007, T-256/04, Respicur,
EU:T:2007:46, § 57). Therefore, it is reasonable to assume that, although the signs
as a whole do not have any meaning for the public in the relevant territory, the
element ‘AUTO’, included in both signs, will be perceived by the relevant Romanian
consumers as a short form of ‘automobile’, which means ‘car’, or as referring to
‘automatic’, as in Romanian there are very similar equivalents for the words
‘automobile’ (‘automobil’ in Romanian) and ‘automatic’ (‘automat’ in Romanian).
Furthermore, ‘AUTO’ is a commonly used word that is generally understood.
Bearing in mind that some of the relevant goods could be intended to be installed
and used in automobiles (e.g. batteries for motor vehicles) or could function
automatically (e.g. apparatuses for recording of sound or images), it is considered
that this element is weak for these goods, since it suggests their nature or field of
application.
For the rest of the goods, which are not related to vehicles or the automotive field, for
example cable clamps (electricity), the element ‘AUTO’ has an average degree of
distinctiveness.
Decision on Opposition No B 2 798 521 page: 6 of 9
The words ‘AUTONICS’ and ‘AUTONIK’ as a whole do not exist in common parlance
and will be perceived by the relevant public as distinctive and fanciful terms with no
straightforward meaning. Therefore, they have an average degree of distinctiveness
in relation to the relevant goods in Class 9.
The figurative element of the contested sign, which consists of two geometrical
shapes, will not be associated with any particular meaning and has an average
degree of distinctiveness.
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.
Visually, the signs coincide in the sequence of letters ‘AUTONI’, present identically
in both marks. They differ in their last letters, ‘CS’ in the earlier mark and ‘K’ in the
contested sign, the figurative element of the contested sign and the stylisation of both
marks, which is not particularly striking and will be perceived as an ordinary graphical
means of bringing the verbal elements to the attention of the public.
Moreover, as regards the figurative element of the contested sign, it should be noted
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).
Therefore, the signs are visually similar to a higher than average degree, although
the coinciding element ‘AUTO’ is weak for some of the goods, because the
commonalities between the marks are not limited to that element but include the
coinciding letters ‘NI’.
Aurally, the pronunciation of the signs coincides in the sound of the letters
‘AUTONIC/K*’, as the letters ‘C’ and ‘K’ will be pronounced identically by the relevant
consumers. The pronunciation differs only in the sound of the last letter of the earlier
mark, namely ‘S’. Moreover, the marks are composed of the same number of
syllables and, therefore, have the same rhythm.
Therefore, the signs are aurally similar to a high degree because the commonalities
between them are not limited to the weak beginning ‘AUTO’ but include other letters
in the marks’ verbal elements.
Conceptually, the relevant public will perceive the element ‘AUTO’, included in both
signs, as having the abovementioned meaning and will therefore associate the marks
with the same meaning on account of this coinciding element. However, the degree
of conceptual similarity is low in relation to some of the goods because the concept
that the marks have in common suggests the nature and field of application of the
goods at issue. For the goods for which this element is of average distinctiveness,
the marks are conceptually similar to 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.
Decision on Opposition No B 2 798 521 page: 7 of 9
d) 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.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation.
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, despite the presence of an element in the mark that is weak for some of the
relevant goods, as stated above in section c).
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on
numerous elements and, in particular, on the recognition of the earlier mark on the
market, the association which can be made with the registered mark, and the degree
of similarity between the marks and between the goods or services identified
(recital 11 of the EUTMR). It must be appreciated globally, taking into account all
factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd
Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528,
§ 22).
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).
As shown above, the goods under comparison are partly identical or similar (to
different degrees) and partly dissimilar. The earlier mark has an average degree of
distinctiveness per se in relation to the relevant goods.
The signs are visually similar to an above average degree and aurally similar to a
high degree on account of the letters ‘AUTONI(C/K)*’, which are at the beginning of
the marks. The conceptual impact of the coinciding letters ‘AUTO’ is limited for some
of the goods due to the low degree of distinctive character of that element. However,
the impact of only one or two differing letters at the end of the marks (and only one
sound aurally) is not sufficient to clearly distinguish the marks visually and aurally.
Therefore, taking into account that average consumers rarely have the chance to
make a direct comparison between different marks, but must trust in their imperfect
recollection of them, the Opposition Division considers that the visual and aural
similarities between the signs are sufficient to lead to a likelihood of confusion,
including a likelihood of association, even though consumers may display an above
average degree of attention with respect to some of the goods. Even consumers who
pay a high degree of attention need to rely on their imperfect recollection of trade
marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Furthermore, the likelihood of confusion for the relevant public cannot safely be
excluded for the contested goods that were found to be similar to only a low degree
Decision on Opposition No B 2 798 521 page: 8 of 9
to those of the earlier mark, due to the considerable visual and aural similarities
between the signs.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and therefore the opposition is partly well founded
on the basis of the opponent’s international registration No 879 705 designating
Romania.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar (to different degrees) to those of the earlier
trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is
a necessary condition for the application of Article 8(1) EUTMR, the opposition based
on this article and directed at these goods cannot be successful.
The opponent has also based its opposition on the designation of Bulgaria, Cyprus,
Greece, Latvia and Lithuania of earlier international registration No 879 705, which is
protected in these territories for no broader scope of goods than the designation
examined above. It also based its opposition on Spanish trade mark registration
No 2 023 481 for the word mark ‘AUTONICS’, protected for the following goods:
Class 9: Photoelectronic sensors, proximity switches, optical fiber sensors, rotary
encoders, ammeters, voltmeters, meters, tachometers, linear speed meters, timers,
frequency meters, dry cell batteries, optical fiber cables, video tapes recorders,
adapters, communication devices between vehicles, computerized playing machines,
photoelectric pipes, integrated circuits, aeronautic communication devices and
thermostats.
This mark covers goods that are covered by the earlier mark compared above, and
other goods, such as communication devices between vehicles, computerized
playing machines, photoelectric pipes, which are clearly different from the remaining
goods of the contested trade mark, namely fire blankets and warning triangles for
vehicles in Class 9. The goods under comparison have different natures, purposes
and methods of use. They do not usually have the same commercial origin and are
not complementary or in competition. Therefore, they are dissimilar. Consequently,
the outcome cannot be different with respect to goods for which the opposition has
already been rejected; no likelihood of confusion exists with respect to those goods.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to
Article 109(3) EUTMR, where each party succeeds on some heads and fails on
others, or if reasons of equity so dictate, the Opposition Division will decide a
different apportionment of costs.
Since the opposition is successful for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
Decision on Opposition No B 2 798 521 page: 9 of 9
The Opposition Division
Begoña URIARTE
VALIENTE
Boyana NAYDENOVA Katarzyna ZANIECKA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.