OPPOSITION No B 2 652 397
Goldcar Spain, S.L.U., Carretera de Valencia, km. 115, Edificio Goldcar, 03550 Sant Joan d'Alacant (Alicante), Spain (opponent), represented by Padima, Calle Gerona, 17, 1º A-B, 03001 Alicante, Spain (professional representative)
a g a i n s t
GO spółka z o.o. s.k.a., Ul. Kurniki 3, 631-156 Kraków, Poland (applicant), represented by Arkadiusz Michalak, Ul. Masarska 9/6, 31-539 Kraków, Poland (professional representative).
On 06/03/2017, the Opposition Division takes the following
1. Opposition No B 2 652 397 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the services of European Union trade mark application No 14 508 584. The opposition is based on, European Union trade mark registration No 12 403 556 for the figurative mark , and on Spanish trade mark registration No 3 527 840 for the word mark GOLDCAR. 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 services
The services on which the opposition is based are the following:
Class 35: Retailing, wholesaling and/or sale via global computer networks of vehicles; commercial management assistance in relation to franchises.
Class 39: Travel reservation, airline bookings, reservations for transport via boat and via motor bus; rental and hire of vehicles; car parking; parking place rental and garage rental; car rental.
The contested services are the following:
Class 36: Sale and lease-purchase financing of motor vehicles.
Class 37: Automobile repair and maintenance.
Class 39: Car rental.
Some of the contested services are identical to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark.
- 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 services assumed to be identical are directed at the public at large. The degree of attention is considered to be higher than average depending on the price and terms and conditions of purchased services.
- The signs
EUTM 12 403 556 (1)
Spanish trade mark 3 527 840 (2)
Earlier trade marks
The relevant territory is the European Union for earlier trade mark (1) and Spain for earlier trade mark (2).
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).
Earlier mark (2) is a word mark that consists of the sole word ‘GOLDCAR’. In the case of word marks, it is the word as such that is protected and not its written form. Earlier mark (1) is a figurative mark consisting of the same word written in bold black capital letters, slightly italicized and depicted in the middle of a light green rectangle.
The contested sign is a figurative mark that consists of the word ‘GO’ in uppercase followed by the word ‘cars’ in lowercase. Both words are separated by a plus sign that slightly overlaps the right side of the letter ‘O’. Everything is represented in white letters with a thin grey outline. Three little shades of grey are represented underneath.
Even though ‘GOLDCAR’ in the earlier marks has no meaning as such and although the average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, 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). In the present case, both the English-speaking part and the non-English speaking part of the public will clearly perceive the elements ‘GOLD’ and ‘CAR’.
Indeed, they are basic words in English language that will be understood by the non-English speaking part of the public (01/09/2011- R1696/2010-1 ‘CC rent a car/ RENT A CAR’, § 32-37 and 22/06/2011-R1432/2010-1 ‘GOLDEN BALLS’ § 20). Therefore the public will perceive the ‘GOLD’ as allusive of the exceptional quality of the services in question and ‘CAR’ as non-distinctive for automobile related services.
Furthermore, ‘GO’ and ‘+’ in the contested sign, are the co-dominant elements as they are the most eye-catching. ’GO’ will be understood by a significant part the non-English speaking part of the public, at least as ‘to move from one place to another’. Therefore, it is also considered weak in the context of automobile related services for this part of the public. However, it is distinctive for the rest of the public. The plus sign indicates addition or positive quantity. As such it is not particularly distinctive as it will convey a positive message, evoking the idea of ‘advantage, something that is increasing or better’. Although written in its plural form, the word ‘cars’ in the contested sign will also be understood as already explained.
Visually, the signs coincide in the letters ‘GO’ and in the word ‘CAR’ but differ in the letters ‘LD’ placed in the third and fourth position of the earlier marks and in the letter ‘S’ placed at the end of the contested sign. Furthermore, they also differ in the black and green colours used in earlier mark (1) and in the plus sign, the shades of grey and the stylization of the contested sign. Therefore, given that the coincidences lay on elements of weak distinctiveness and taking into consideration the number of differences established, the contested sign is visually similar to a low degree to earlier marks (1) and (2).
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the elements ‘GO’ and ‘CAR’ that have a limited distinctive role. The pronunciation differs in the letters ‘LD’ of the earlier marks and in the letter ‘S’ at the end of the contested sign which have no counterparts in the other mark(s). Furthermore, the sound of the signs also differs in the pronunciation of the plus sign in the contested mark which is in any case, not particularly distinctive per se. Consequently, the signs are aurally similar to a low degree.
Conceptually, although the earlier mark as a whole do not have any meaning for the public in the relevant territory, the verbal element ‘CAR’, playing a non-distinctive role and included in both signs, will be understood as already explained above. To that extent and taking into account the concepts conveyed by the remaining elements of the signs at issue, the signs are conceptually similar to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of some weak elements in the marks as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).
According to the same line of case-law, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.
In the present case, even taking into account that the contested services are assumed to be identical to the opponent’s services, the signs are visually, aurally and conceptually similar to a low degree.
Indeed, the word elements composing the marks will all be understood by the public or by a significant part of the public. Moreover, the coinciding element, ‘CAR(S)’, on top of having a weak distinctive character, is clearly not the dominant element in the contested sign. As a result of the non-distinctive character of that element, the differences are even more noticeable. Even if the word ‘GO’ in the contested sign occupies a co-dominant position and is placed at the beginning of the sign, consumers will not be misled as regards the commercial origin of the services at stake. The additional elements are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks, and, despite of being of limited distinctiveness, still clearly introduce different concepts. For this part of the public for which the word ‘GO’ is distinctive, there is even less risk of likelihood of confusion.
Considering all the above, even assuming that the services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.