OPPOSITION No B 2 677 006

Volkswagen Aktiengesellschaft, Berliner Ring 2, 38440 Wolfsburg, Germany (opponent), represented by Martin Müller-Korf, Volkswagen Aktiengesellschaft, Berliner Ring 2, 38440 Wolfsburg, Germany (employee representative)

a g a i n s t

Min Tang, Rm 1404, Unit D, 4th Building, Phase Two Ai’di Garden, Longping West Rd, Longgang District, Shenzhen City, People’s Republic of China (applicant), represented by Renaissance Solicitors LLP, 413 Hoe Street, Walthamstow, London E17 9AP, United Kingdom (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 677 006 is partially upheld, namely for the following contested goods:

Class 9:  Batteries, electric, for vehicles.

Class 11: Lights for automobiles.

Class 28: Toys; toy vehicles.

2.        European Union trade mark application No 14 805 386 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 805 386, namely against some of the goods in Classes 9, 11 and 28. The opposition is based on European Union trade mark registration No 1 250 299. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

On 20/02/2017, the EUTM application in question was partially refused in parallel opposition proceedings No B 2 663 808 and this decision became final.

On 29/05/2017, the Office informed the opponent and gave it until the 29/07/2017 to confirm whether or not it maintained its opposition against the remaining goods covered by the EUTM application.

The opponent replied on 29/06/2017 and confirmed that it maintained its opposition against the goods that were not already refused in opposition proceedings No B 2 663 808; therefore, the Office shall give a ruling on the opposition taking this into account.

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 and services

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

Class 7:        Motors and engines and parts therefor (except for land vehicles), engine components for land vehicles including air filters for motors and engines, glow plugs for diesel engines; machine coupling and transmission components (except for land vehicles), including clutches other than for land vehicles, jacks (machines); agricultural implements other than hand-operated, all the aforesaid goods not being cooling, heating, refrigeration and air-conditioning apparatus or parts thereof.

Class 12:        Apparatus for locomotion by land, air or water and parts therefor, including vehicles and parts therefor, automobiles and parts therefor, motors and engines for land vehicles, other than cooling, heating, refrigeration and air-conditioning apparatus or parts thereof; all parts for the aforesaid goods, excluding those manufactured as prototypes or replacement parts by means of rapid prototyping or laser sinter processes.

Class 28:        Games and playthings; gymnastic and sporting articles included in Class 28, including model vehicles, in particular model cars, balls, soft toys and other soft toy articles, but excluding angling apparatus and angling accessories; apparatus for electronic games (including video games) other than those adapted for use with television receivers only; all parts for the aforesaid goods, excluding those manufactured as prototypes or replacement parts by means of rapid prototyping or laser sinter processes.

Class 37:        Repair, maintenance and care of vehicles, including repair of broken-down vehicles, cleaning, repair, maintenance, servicing and spraying of vehicles, all the aforesaid services other than for cooling, heating, refrigeration and air-conditioning apparatus or parts thereof; all the aforesaid services except in the fields of rapid prototyping and laser sinter processes.

After the partial refusal of 20/02/2017 in opposition proceedings No B 2 663 808, the contested goods are the following:

Class 9:        Batteries, electric, for vehicles; hands free kits for phones.

Class 11:        Lights for automobiles.

Class 28:        Toys; toy vehicles.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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.

Contested goods in Class 9

The contested batteries, electric, for vehicles are similar to the opponent’s vehicles in Class 12, as they can have the same end users and distribution channels. Furthermore, they are complementary.

The contested hands free kits for phones are equipment intended to allow the use of telephones without the use of the hands. These goods have almost nothing in common with the opponent’s goods and services in Classes 7, 12, 28 and 37. The opponent’s goods in Classes 7 and 12 are essentially vehicles and parts therefor; the goods in Class 28 consist of playthings and sporting items and, finally, the services in Class 37 relate to the repair and maintenance of vehicles. Admittedly, vehicles can include the contested goods. Nonetheless, the mere fact that a certain product can be composed of several components does not establish automatic similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). Similarity will be found only in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producer, public and/or complementarity, are fulfilled. This is not the case for the relevant goods and services, which have different natures and purposes. Moreover, they are not provided or manufactured by the same undertakings and they are not in competition with or complementary to each other. Therefore, these goods are dissimilar.

Contested goods in Class 11

The contested lights for automobiles are similar to the opponent’s parts [automobiles] in Class 12, since they have the same nature and, in some case, purpose. These goods can be manufactured by the same companies and target the same consumers, who can find them in the same outlets.

Contested goods in Class 28

The contested toys; toy vehicles are included in the broad category of the opponent’s playthings. Therefore, these goods are identical.

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 or similar are directed at the public at large and, as regards some of the goods in Classes 11 and 12, at business customers in the field of automotive industry.

The public’s degree of attentiveness may vary from average to high, depending on the price and sophistication of the purchased goods.

3. The signs

EOS
Earlier trade mark	Contested sign

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 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 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The marks are not meaningful in certain territories, for example for the Czech-, Latvian-, Lithuanian- and Polish-speaking parts of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on these parts of the public.

The earlier mark is a word mark, ‘EOS’. It does not have any meaning for the relevant public and has an average degree of distinctiveness in in relation to the goods in question.

The contested sign is a figurative mark consisting of the word ‘EOSO’ in slightly stylised bold black upper case letters. The word will be perceived by the relevant public as meaningless and is distinctive in relation to the goods in question.

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 stylisation of the contested sign has a limited significance in the present comparison.

The earlier mark is fully incorporated in the contested sign. 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 letters ‘EOS’. They differ only in the additional letter ‘O’ and in the less relevant stylisation of the contested sign. Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant language areas, the pronunciation of the signs coincides in the sound of the letters ‘EOS’, present identically in both signs. The pronunciation differs in the sound of the last letter ‘O’ of the contested sign. Therefore, the signs are similar to an average degree.

Conceptually, the public in the relevant language areas will not attach any meaning to either of the signs. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

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.

5. Global assessment, other arguments and conclusion

The contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods and services. The earlier trade mark enjoys a normal degree of inherent distinctiveness and the degree of attentiveness of the general and professional public will vary from average to high.

The signs in dispute are visually and aurally similar to an average degree, due to the commonality in the string of letters ‘EOS’, which constitutes the entirety of the earlier mark and accounts for three out of the four letters of the contested sign. Neither of the signs has a meaning for the relevant public; therefore, there are no conceptual differences between the signs that would distinguish between their overall impressions.

In the present case, the difference in a single letter placed at the end of the sign and the stylisation of the contested sign are not sufficient to overcome the fact that the earlier mark is entirely included in the contested sign, especially taking into account the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). 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).

Considering all the above, there is a likelihood of confusion on the part of the Czech-, Latvian-, Lithuanian- and Polish-speaking parts 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 1 250 299. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Andrea VALISA

Orsola LAMBERTI

María Clara  IBÁÑEZ FIORILLO

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.