OPPOSITION No B 2 761 727

Bayerische Motoren Werke Aktiengesellschaft, Petuelring 130, 80809 München, Germany (opponent), represented by Klaka, Delpstr. 4, 81679 München, Germany, (professional representative)

a g a i n s t

Modauto Europa, Avda Real de Pinto, 91, B, Bloque 3, 28021 Madrid, Spain (applicant)

On 19/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 761 727 is upheld for all the contested goods.

2.        European Union trade mark application No 15 450 521 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 15 450 521 . The opposition is based on, inter alia,   international trade mark registration No 1 095 628 ‘M1’ designating the European Union. The opponent invoked Article (1)(b) and 8(5) 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 trade mark specified above.

1. The goods

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

Class 12: Vehicles; apparatus for locomotion by land, air or water.

The contested goods are the following:

Class 12: Vehicle trolleys; Vehicle partitions; Vehicle trailers; Bodywork (Vehicle -); Bumpers (Vehicle -); Vehicle windshields; Vehicle tyres; Vehicle tires; Vehicle seating; Seats (Vehicle -); Vehicle cabs; Vehicle sunroofs; Wheels (Vehicle -); Vehicle bumpers; Vehicle chassis; Chassis (Vehicle -); Vehicle mirrors; Vehicle joysticks; Vehicle propellers; Vehicle doors; Vehicle seats; Vehicle windows; Vehicle windscreens; Vehicle bodies; Vehicle wheels; Vehicle hoods; Hoods (Vehicle -); Vans [vehicles]; Rail vehicles; Vehicles (Refrigerated -); Industrial vehicles; Air vehicles; Vehicles (Electric -); Electric vehicles; Sleighs [vehicles]; Trolleys [vehicles]; Caissons [vehicles]; Vehicle axle assemblies; Vehicle wheel tyres; Vehicle wheel tires; Wheel tyres (Vehicle -); Wheel tires (Vehicle -); Vehicle seat subsystems; Motor vehicle bodies; Vehicle safety seats; Wheel hubs (Vehicle -); Suspension springs (Vehicle -); Vehicle covers [fitted]; Vehicle covers [shaped]; Vehicle disc brakes; Insulated vehicle bodies; Spokes (Vehicle wheel -); Castors [vehicle wheels]; Vehicle brake shoes; Vehicle rear windows; Land vehicle transmissions; Vehicle suspension springs; Vehicle running boards; Vehicle wheel hubs; Underbodies of vehicle; Vehicle shock absorbers; Vehicle mirrors [retrovisors]; Shaped vehicle mats; Vehicle tow bars; Vehicle roll bars; Vehicle seat covers; Vehicle door panels; Fitted vehicle covers; Vehicle wheel spokes; Vehicle brake discs; Vehicle wheel rims; Vehicle brake pads; Sideguards for vehicles; Racks for vehicles; Wheel hubs (Vehicles -); Alarms for vehicles; Suspensions for vehicles; Bumpers for vehicles; Linings for vehicles; Skylights for vehicles; Tankers [land vehicles]; Seating for vehicles; Seats for vehicles; Sunroofs for vehicles; Wheels for vehicles; Axles for vehicles; Hoods for vehicles; Undercarriages for vehicles; Thrusters for vehicles; Chassis of vehicles; Undercarts for vehicles; Mirrors for vehicles; Ashtrays for vehicles; Doors for vehicles; Windscreens for vehicles; Windshields for vehicles; Upholstery for vehicles; Spoilers for vehicles; Horns for vehicles; Brakes for vehicles; Gears for vehicles; Sports utility vehicles; Airbags for vehicles; Mudwings for vehicles; Mudguards for vehicles; Transmissions [land vehicle parts]; Jalousies for vehicle windows; Fenders [land vehicle parts]; Differentials [land vehicle parts]; Remotely controlled land vehicle; Pumps (Air -) [vehicle accessories]; Air pumps [vehicle accessories]; Axles [land vehicle parts]; Rearview mirrors [vehicle parts]; Steering wheels [vehicle parts]; Windshield visors [vehicle parts]; Ball joints [vehicle parts]; Vehicle wheels (Hubs for -); Buffers for vehicle bumpers; Wheels [land vehicle parts]; Tubes for vehicle wheels; Windshields [land vehicle parts]; Vehicle windows incorporating heaters; Vehicle wheel tires [tyres]; Vehicle safety seat cushions; Insulated vehicle body panels; Spokes for vehicle wheels; Sun visors [vehicle parts]; Vehicle anti-theft alarms; Vehicle seat covers [fitted]; Vehicle seat covers [shaped]; Rims for vehicle wheels; Hubs for vehicle wheels; Shock absorbers [vehicle parts]; Suspension struts [vehicle parts]; Covers for vehicle seats; Self-propelled electric vehicle; Tyres for vehicle wheels; Tires for vehicle wheels; Valves for vehicle tires; Hoods for vehicle engines; Fitted vehicle seat covers; Axle assemblies for vehicles; Spiked tires for vehicles; Brake levers for vehicles; Brake cylinders for vehicles; Carriers (Luggage -) for vehicles; Luggage racks for vehicles; Freewheels for land vehicles; Tail lifts for vehicles; Petrol tanks for vehicles; Interior pouches for vehicles; Interior panels for vehicles; Safety chairs for vehicles; Safety seats for vehicles; Aerofoils for sea vehicles; Tyres for land vehicles; Hardtops [roofs] for vehicles; Blinds adapted for vehicles; Chain deflectors for vehicles; Wheel rims for vehicles; Self-propelled loading vehicles; Scratch guards for vehicles; Suspension struts for vehicles; Berths (Sleeping -) for vehicles; Reversing alarms for vehicles; Alarms (Reversing -) for vehicles; Ejector seats for vehicles; Wheel hubs for vehicles; Steering racks for vehicles; Starters for land vehicles; Tipping bodies for vehicles; Protective interiors for vehicles; Brake blocks for vehicles; Indicators (Direction -) for vehicles; Directional indicators for vehicles; Signals (Direction -) for vehicles; Linings (Brake -) for vehicles; Aerofoils for land vehicles; Tracks for armoured vehicles; Electric horns for vehicles; Folding hoods for vehicles; Rolling wheels for vehicles; Fenders for water vehicles; Vinyl roofs for vehicles; Fenders for land vehicles; Inflatable seats for vehicles; Ramjets for land vehicles; Safety alarms for vehicles; Side doors for vehicles; Skylight windows for vehicles; Wooden seats for vehicles; Braking systems for vehicles; Bodies for land vehicles; Monocoque structures for vehicles; Wheel cylinders for vehicles; Brake components for vehicles; Camshafts for land vehicles; Shafts for land vehicles; Pedal driven land vehicles; Passenger carriages [rail vehicles]; Covers (Shaped -) for vehicles; Aerodynamic fairings for vehicles; Roof racks for vehicles; Roof linings for vehicles; Roof cases for vehicles; Steering linkages for vehicles; Electric sunroofs for vehicles; Bodywork parts for vehicles; Brake cables for vehicles; Glass screens for vehicles; Skylights [windows] for vehicles; Electrically powered land vehicles; Alarm instruments for vehicles; Casters [wheels] for vehicles; Wheels for motor vehicles; Towing hooks for vehicles; Bars (Torsion -) for vehicles; Brake sets for vehicles; Shoes (Brake -) for vehicles; Brake segments for vehicles; Air cushion borne vehicles; Segments (Brake -) for vehicles; Drink holders for vehicles; Bicycle racks for vehicles; Burglar alarms for vehicles; Tow bars for vehicles; Tires for land vehicles; Torsion bars for vehicles; Brake linings for vehicles; Brake lines for vehicles; Mirrors [rearview] for vehicles; Rearview mirrors for vehicles; Jockey wheels for vehicles; Brake calipers for vehicles; Tyres for commercial vehicles; Head restraints for vehicles; Wheel covers [for vehicles]; Brake pads for vehicles; Klaxons [horns] for vehicles; Torsion dampers for vehicles; Steering columns for vehicles; Wind deflectors for vehicles; Air deflectors for vehicles; Spoilers for land vehicles; Covers (Seat -) for vehicles; Seat covers for vehicles; Brake pedals for vehicles; Turn signals for vehicles; Steering wheels for vehicles; Luggage carriers for vehicles; Roof bars for vehicles; Body panels for vehicles; Spoilers for automotive vehicles; Direction signals for vehicles; Chassis for motor vehicles; Security alarms for vehicles; Turbines for land vehicles; Brake systems for vehicles; Alarms for motor vehicles; Seats for automotive vehicles; Tyres for motor vehicles; Spray guards for vehicles; Panels for vehicle bodies [shaped]; Vehicle booster seats for children; Vehicle safety harness for children; Valves for vehicle tires [tyres]; Afterburners for land vehicle engines; Drive belts [land vehicle parts]; Drive gears [land vehicle parts]; Vehicle tire valve stem caps; Lug nuts for vehicle wheels; Balancing weights for vehicle wheels; Tire valves for vehicle tires; Valve stems for vehicle tires; Safety belts for vehicle seats; Metal studs for vehicle tyres; Head-rests for vehicle seats; Inner tubes for vehicle tires; Hubs for vehicle wheels (motorcycles); Pumps for inflating vehicle tyres; Balance weights for vehicle wheels; Tires, solid, for vehicle wheels; Tyres, solid, for vehicle wheels; Tyres for motor vehicle wheels; Solid tires for vehicle wheels; Vehicle safety belts for children; Fitted vehicle covers for automobiles; Covers for vehicle steering wheels; Steering wheels (Covers for vehicle -); Friction wheels for land vehicles; Vehicles for travel by water; Anti-dazzle devices for vehicles; Anti-glare devices for vehicles; Mechanical gearings for land vehicles; Propulsion mechanisms for land vehicles; Snow chains for motor vehicles; Power clutches for land vehicles; Friction clutches for land vehicles; Anti-glare sunstrips for vehicles; Chain transmissions for land vehicles; Chains (Driving -) for land vehicles; Chains for driving road vehicles; Protecting covers [fitted] for vehicles; Alarm systems for motor vehicles; Fan motors for land vehicles; Safety signals [audible] for vehicles; Security alarm systems for vehicles; Reverse motion alarms for vehicles; Warning alarms [reversing] for vehicles; Sound alarms (Reversing -) for vehicles; Direction indicator signals for vehicles; Linings for brakes of vehicles; Anti-static strips for vehicles; Seat posts [parts of vehicles]; Seat pillars [parts of vehicles]; Components for brakes for vehicles; Remote alarms for land vehicles; Air flow spoilers for vehicles; Roof top carriers for vehicles; Gear cases for land vehicles; Alarm systems for land vehicles; Rear view mirrors for vehicles; Transmission components for land vehicles; Spare tire carriers for vehicles; Universal joints for land vehicles; Axle bearings for land vehicles; Roof panels for land vehicles; Brake systems for land vehicles; Suspension systems for land vehicles; Steering units for land vehicles; Gear lever knobs for vehicles; Transmission belts for land vehicles; Gear wheels for land vehicles; Anti-theft alarms for vehicles.

        

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 vans [vehicles]; rail vehicles; vehicles (refrigerated -); industrial vehicles;  vehicles (electric -); electric vehicles; sleighs [vehicles]; trolleys [vehicles]; caissons [vehicles]; remotely controlled land vehicle; pedal driven land vehicles; electrically powered land vehicle are included in vehicles from the earlier right. Furthermore, the contested air vehicles and vehicles for travel by water are included in apparatus for locomotion by air and apparatus for locomotion by water, respectively. These goods are identical. 

The contested fenders for water vehicles; aerofoils for sea vehicles are similar to apparatus for locomotion by water as the contested goods are used as parts of the earlier goods. The goods usually stem from the same producers and are distributed through the same channels to the same relevant public. Moreover, their interdependence marks a complementary relationship.

 

Vehicle safety harness for children are similar to a low degree to vehicles as protected by the earlier mark given that they share distribution channels as well as a complementary relationship.  

The remaining goods, as listed above, are all similar to vehicles from the earlier mark given that the former are all parts and accessories of vehicles and therefore derive from the same producers, share distribution channels and are aimed at the same consumers. Again, the goods are interdependent and as such they are complementary.

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 identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods.

Taking into consideration 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). This applies by analogy to other kinds of vehicles and to some parts that can be expensive, such as suspension systems.

3. The signs

M1
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).

‘M1’ from both marks will be understood as conveying the concept of a letter and a number, despite the stylisation of this element in the contested sign. Other concepts may also be attributed, such as a particular kind of motorway in the UK or indeed as referring to a particular model. In the first scenario, the distinctiveness of this element is average whilst in the others it may be lower than average. This element is also the most dominant element of the contested sign due to is size and eye-catching colouring.

‘RACING’ in the contested sign is not only far less eye-catching but it will also be perceived as a descriptive, non-distinctive element since it will be linked to the sport or, at least, to the notion of trying to go faster than somebody else. Given that all the relevant goods are vehicles or vehicle-related, this element will not be perceived as indicating the commercial origin of the goods and thus its weighting is reduced, both due to its lack of dominance and distinctiveness. Even for non-English speakers, this notion will be largely understood due to the popularity of this sport (motor-racing, horse racing for example) across the European Union as well as its widespread use in sports and television. For the sake of simplicity, the Opposition Division will focus on this part of the public, familiar enough with the language to understand this term, which is a substantial part of the EU.

Whilst it is true that the contested mark has more visual elements than the earlier mark, these are made up of a black circular background bordered by what will be seen as a chequered flag such as that used in motor races. Not only is the circle a rather commonplace element on trade marks, largely used as a label, the association once again to ‘racing’ means that this element will not be grasped upon due to its lack of distinctive character. Furthermore, 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).

It is also relevant to note that ‘M1’ is at the top of the contested sign, given that signs are read from top to bottom and left to right, this is the first element that will be seen by consumers and as such carries more weight, in this case, further enhanced due to its dominant and largely distinctive character.

Visually, the signs coincide in in the whole of the earlier mark, namely ‘M1’, featured as the most dominant, most distinctive element of the contested mark and perfectly identifiable as such despite its figurative nature. Though they differ in the additional elements of the contested sign, as described above, their lack of distinctive character reduces their impact in the sign as a whole and is certainly not sufficient to detract attention from the central, eye-catching element ‘M1’. It is also relevant to note that, given that the earlier mark is a word mark, protection is for the word itself rather than its specific representation. In view of the foregoing, therefore, the signs are found to be at least visually similar to an average degree.

Aurally, irrespective of the different pronunciations across the European Union, the signs coincide in the sounds of ‘M1’ and differ in the contested sign’s ‘RACING’. Taking into account the arguments previously set out, the signs are found at least similar to an average degree.

Conceptually, the concepts from both signs have been set out above and they are found to be at least 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.

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 notions conveyed by the earlier trade mark as a whole either have no meaning in respect of the goods in question or there is a slight association leading to a lower degree of distinctive character, as explained in the previous section.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly similar to varying degrees and are aimed at the general public and professionals in the relevant sector who display a degree of attention ranging from average to high, depending on the specific goods.

The signs have been found to be at least similar to an average degree on all levels of comparison. Indeed, the fact that the earlier mark is contained as the most distinctive and dominant element in the contested sign, combined with the non-distinctive elements described above, means that there is a likelihood that the signs will be associated.

Indeed, 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).

Further, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In this sense, it is highly 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

It is also important to consider 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 public familiar with the English language.  Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 095 628 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods. For the sake of completeness, considering the principle of interdependence and the similarities between the signs, this likelihood of confusion clearly encompasses those goods found similar to a low degree.

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/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness. Similarly, it is also not necessary to enter into the opponent’s claim of a family of marks since likelihood of confusion has been found on the basis of this earlier mark.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). Likewise, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Marta GARCÍA COLLADO

Vanessa PAGE

Eva Inés PÉREZ SANTONJA

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.