OPPOSITION No B 2 685 553
Bayerische Motoren Werke Aktiengesellschaft, Petuelring 130, 80809 München,
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
On 10/11/2017, the Opposition Division takes the following
1. Opposition No B 2 685 553 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
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
Spain, Portugal, Austria, Italy, Benelux and France;
(ii) German trade mark registration No 39 704 005 ‘M Power’ (word);
(iii) United Kingdom trade mark registration No 2 139 247 ‘M Power’ (word);
(iv) Benelux trade mark registration No 393 886 (figurative);
(v) Swedish trade mark registration No 196 604 (figurative);
Decision on Opposition No B 2 685 553 page: 2 of 10
(vi)SpanishtrademarkregistrationNo 1 043 376
The opponent invoked Article 8(1)(b) EUTMR.
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
examination to the facts, evidence and arguments submitted by the parties and the
It follows that the Office cannot take into account any alleged rights for which the
opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
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
registration certificate and, as the case may be, of the latest renewal certificate,
showing that the term of protection of the trade mark extends beyond the time limit
referred to in paragraph 1 and any extension thereof, or equivalent documents
emanating from the administration by which the trade mark was registered —
Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the
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
substantiate the opponent’s rights in the following earlier trade marks:
Decision on Opposition No B 2 685 553 page: 3 of 10
(i) international trade mark registration No 677 211, designating Spain, Portugal,
Austria, Italy, Benelux and France;
(ii) German trade mark registration No 39 704 005;
(iii) Benelux trade mark registration No 393 886;
(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).
In particular, the opponent has inserted translations of certain parts of the certificates
and omitted to do this regarding other parts.
Only irrelevant administrative indications (e.g. previous transfers of ownership that do
not affect the opposition, administrative entries on fees, etc.) with no bearing on the
case may be omitted from the translation. In the present case, among other parts, the
list of goods and services for which the marks are registered is not translated. There
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.
According to Rule 19(4) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will not take into account written
submissions or documents, or parts thereof, that have not been submitted in or that
have not been translated into the language of the proceedings, within the time limit
set by the Office.
It follows that the mentioned evidence filed by the opponent cannot be taken into
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.
Decision on Opposition No B 2 685 553 page: 4 of 10
The opposition must, therefore, be rejected as unfounded, as far as it is based on
these earlier marks.
Since evidence containing all relevant data in the language of the proceedings has
been submitted only regarding the UK trade mark registration No 2 139 247, it is only
this earlier right on the basis of which the opposition will be reviewed.
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
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.
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
Class 9: Computers and computer software for use with motors and engines, motor
electronics apparatus, computers and computer software for use in vehicles;
electronic storage media including CD-Roms, magnetic discs and tapes; video and
audio cassettes; motorcycle helmets; protective eye pieces; sunglasses; all relating
to motorised land vehicles and parts and fittings therefor.
Class 12: Motor land vehicles; motors and engines for land vehicles; machine
coupling and transmission components for land vehicles; parts and fittings for all the
Class 37: Repair and maintenance of vehicles and motors; advisory services relating
to vehicle and motor repair and maintenance.
Decision on Opposition No B 2 685 553 page: 5 of 10
The contested goods and services are the following:
Class 12: Motor vehicles, namely automobiles, sport utility vehicles and structural
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.
Contested goods in Class 12
Motor vehicles, namely automobiles, sport utility vehicles of the contested sign are
included in the broad category of motor land vehicles of the earlier mark. Therefore,
they are identical.
The contested sign’s structural parts thereof, being specific parts for automobiles and
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
method of use of these goods and services are not the same, they have some
similarities, as they are complementary and the services are generally offered in the
same places where the goods are offered for sale. Furthermore, they target the same
Contested services in Class 37
Motor vehicle repair and maintenance services of the applicant’s mark are identical to
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
b) Relevant public — degree of attention
Decision on Opposition No B 2 685 553 page: 6 of 10
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 and services found to be identical or similar to a low
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
Taking into consideration the price of motor vehicles, 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 motor vehicle, 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).
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
selected by consumers after a careful review, given they are expensive goods, the
attention when selecting the provider of such services is also considered to be higher
c) The signs
M Power EMPOWER THE DRIVE
Earlier trade mark Contested sign
The relevant territory is the United Kingdom.
Decision on Opposition No B 2 685 553 page: 7 of 10
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
The element ‘M’ of the earlier mark will not create any associations in relation to the
goods and services in question. As for its second verbal element ‘POWER’, it has 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.
The contested sign is composed of the English expression ‘EMPOWER THE DRIVE’.
‘EMPOWER’ has a number of meanings, among which ‘to confer power on, to make
powerful’ and ‘to authorize or license to do something or for a purpose’ (Oxford
English Dictionary). In view of what has been said above regarding ‘POWER’, the
meaning of ‘EMPOWER’ related to conferring power will be allusive in relation to the
goods and services in question. In this context however, it is to be noted that its
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
THE DRIVE’ is a short slogan, which does not have a single straightforward meaning.
By combining words that alone bring concrete associations with motor vehicles, the
slogan is an unusual combination using the different concepts behind its separate
elements to create a laudatory expression, understood as an encouragement to
make the driving experience more powerful or an authorisation to begin the drive (the
Since the signs are word marks, and word marks do not have dominant elements, an
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).
Decision on Opposition No B 2 685 553 page: 8 of 10
In the present case the signs coincide in ‘POWER’, which is one of the elements of
the earlier sign and is contained in ‘EMPOWER’ of the contested one. In fact,
‘EMPOWER’ is a derivative of ‘POWER’. Irrespective of the fact that the earlier mark
is composed of the elements ‘M POWER’ and the first word element of the contested
sign ‘EMPOWER’ contains the letter ‘M’ in second place followed by the letters
‘POWER’, it is not likely that consumers will break down a three-syllable meaningful
word into separate parts, especially having in mind that (i) the element ‘M’ in the
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,
and the element ‘M’, which is the first element in the earlier mark.
In its observations the applicant states among others that consumers will focus their
attention on the first element ‘EMPOWER’ in the contested signs, since as a rule, the
beginning of signs usually has greater impact on the consumer’s perception. This
principle however should not be applied in a blanket fashion, but each case should
be assessed separately, upon taking into account all relevant factors. In the present
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
Aurally, ‘EMPOWER’ in the contested sign and ‘M POWER’, which constitutes the
earlier mark, will be identically pronounced by the relevant consumers. The
pronunciation of the signs will differ in ‘THE DRIVE’ in the contested sign, which has
no counterpart in the earlier mark.
In view of the foregoing, and upon taking into account that aurally the entire earlier
mark will be contained in the contested one, the signs are aurally similar to an
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.
Decision on Opposition No B 2 685 553 page: 9 of 10
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.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’). The examination will proceed
on the assumption that the earlier mark has enhanced distinctiveness.
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).
The Opposition Division has assumed in section d) of this decision that the earlier
mark has been extensively used and enjoys an enhanced scope of protection. The
examination of likelihood of confusion will, therefore, proceed on the premise that the
earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive
the earlier mark, the greater will be the likelihood of confusion, and, therefore, marks
with a highly distinctive character because of the recognition they possess on the
market, enjoy broader protection than marks with a less distinctive character
(29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
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
contested sign and its separate elements, as well as the connotations it creates
taken as a whole, are of reduced distinctiveness due to their allusive or laudatory
character. However, the coinciding element is also allusive with respect to the goods
and services in question and, therefore, of lesser distinctiveness than average.
Further, contrary to what the opponent contends, the established average degree of
aural similarity between the signs, identity between part of the compared goods and
services and assumed enhanced distinctiveness of the earlier mark are not sufficient
to offset the high degree of attention of the public and the very low degree of visual
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.
Decision on Opposition No B 2 685 553 page: 10 of 10
Considering all the above, there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR, it is
unnecessary to examine the evidence of use filed by the opponent.
Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness
due to extensive use, the outcome of no likelihood of confusion remains the same.
Therefore, it is not necessary to examine the evidence of extensive use.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
Ric WASLEY Teodora Valentinova
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.