OPPOSITION No B 2 592 775
Pininfarina S.p.A., Via Bruno Buozzi, 6, 10121 Torino, Italy (opponent), represented by Jacobacci & Partners S.p.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative)
a g a i n s t
SNCF-C6, Immeuble Lumière 40 Avenue des Terroirs de France, 75012 Paris, France (applicant), represented by Céline Pires, 52 boulevard Sébastopol, 75003 Paris, France (professional representative).
On 17/03/2017, the Opposition Division takes the following
1. Opposition No B 2 592 775 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 349 286, namely against all the goods in Class 12. The opposition is based on international trade mark registration No 1 107 559 designating the European Union. 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 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: Vehicles, for land, air and sea.
The contested vehicles, for land, air and sea are included in the broader category of the opponent’s vehicles. They are identical.
- 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 are directed at the public at large and at business customers with specific professional knowledge or expertise in the market for vehicles.
The degree of attention may vary from average to high, the latter being when expensive purchases of vehicles are involved, in particular vehicles such as automobiles, motor cars for racing, trucks and lorries, motor camping homes, etc, as in these cases taking into consideration the price of e.g. 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).
- The signs
Earlier trade mark
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).
Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, § 25), the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (06/10/2004, T 356/02, ‘VITAKRAFT’, paragraph 51).
The word ‘BUS’ exists as such, or is very close to the equivalent words, in the official languages of the European Union, e.g. ‘bus’ in Danish, Dutch and German, ‘buss’ in Swedish or Latvian, ‘autobús’ in Spanish and ‘autobus’ in French. Furthermore, the relevant public will understand the word ‘bus’ as it is a widely used term for vehicles. Moreover, on account of the sophisticated nature of some of the relevant goods, such as aircrafts, the relevant public will be familiar with the meaning of the English term as this language is commonly used for communicating among specialists in the engineering or other technical fields. Therefore, the public throughout the relevant territory will discern the word ‘BUS’ in both signs in question and understand it as a large vehicle designed to carry passengers. In relation to the goods in question the element ‘BUS’ is descriptive of their objective characteristics, as it refers to the kind of land vehicles (autobuses, trolleybuses), or indicates the special design of vehicles for locomotion by sea insofar as such vessels can be fitted for transporting buses. In relation to vehicles for locomotion by air, the term can be understood as referring to aircrafts for carrying passengers.
Therefore, in either of the signs the element ‘BUS’ will not be attributed any trade mark significance in the context of all of the relevant goods. Consequently, when encountering the signs at issue the public will focus more attention on the elements that are capable of indicating commercial origin, namely the element ‘HY’ in the earlier mark and ‘OUI’ in the contested sign.
Contrary to the opponent’s argument, the meaning of the word ‘BUS’, as given just above, must be seen as clear when taking into consideration the relevant goods. The meaning and the distinctiveness of the signs’ elements are assessed in relation to the goods in question, and it is therefore irrelevant for this assessment whether other words end with the suffix ‘BUS’.
It can be noted that contrary to the opponent’s argument, elements of the mark can be perceived as non-distinctive even though the mark as a whole is distinctive (see below under section d) of this decision). When assessing whether a sign can be registered as a trade mark, it is the sign as a whole that is assessed.
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
For reasons set out above, the common element ‘BUS’ of the signs is non-distinctive in relation to the goods in question. The element ‘OUI’ of the contested sign is meaningful in certain territories, for example in French where it means ‘yes’. However, in other territories, this word lacks any clear meaning.
The Opposition Division will first examine the opposition in relation to the part of the public for which the differentiating elements of the signs, ‘HY’ and ‘OUI’, have the highest degree of aural similarity whilst remaining conceptually neutral so that the conceptual perception of the signs does not put a distance between their overall impressions. This is the best light in which the opponent’s case can be considered.
Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the Portuguese-speaking part of the public, who will understand neither the verbal element ‘OUI’ in the contested sign nor the verbal element ‘HY’ in the earlier mark, and for which these elements have an average degree of distinctiveness in relation to the goods. Furthermore, for this part of the public the aural similarity will be the highest.
Visually, the signs coincide in the element ‘BUS’ which, however, has no distinguishing capacity for the goods at issue. The signs differ in the letters ‘HY’ of the earlier mark and ‘OUI’ in the contested sign, which are also their only distinctive components.
Even though the Office agrees with the opponent’s argument that it is not sufficient to preclude likelihood of confusion merely because the signs differ in their initial parts, the Office can still take into consideration that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.
As the signs merely coincide in a non-distinctive element and as the differentiating parts of the signs have no commonalities whatsoever, they are visually dissimilar.
Aurally, the pronunciation of the signs coincides in the sound of the letters /HY/ constituting the first element of the earlier mark, which will be pronounced in Portuguese as /I/ and the sound of the letter /**I/ in the first element of the contested sign. Furthermore, the signs coincide in the sound of the letters constituting the verbal element /BUS/ in both signs, however, this element is non-distinctive. The signs differ in the pronunciation of the letters /OU*/ in the first element of the contested sign.
Therefore, the signs are aurally similar to a low degree.
Conceptually, the signs are dissimilar because they overlap in a non-distinctive element and the differentiating elements convey no concepts. Therefore, the overlap has no impact.
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 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 clear 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 a non-distinctive element in the mark as stated above in section c) of this decision.
- 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, the degree of similarity between the marks and between the goods or services identified (recital 8 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).
The goods are identical and the inherent distinctiveness of the earlier mark is normal. The degree of attention of the relevant public varies from average to high.
The signs coincide only in the element ‘BUS’, which is non-distinctive, as explained in detail in section c) of this decision. They differ in the first elements of both marks, namely ‘HY’ of the earlier mark and ‘OUI’ of the contested sign. These are the first elements and the only distinctive elements of the signs.
According to settled case-law, if trade marks have identical parts that are weak or devoid of distinctive character, the existing differences between the signs are to be given more importance in the overall assessment of the signs (18/03/2002, R 0814/2001-3, ALL-DAY AQUA / Krüger All Days, § 50; and 14/05/2001, R 0257/2000-4, e plus / PLUS, § 22). Such differences reduce the likelihood of confusion between conflicting trade marks. This clearly applies to the present case in which, because of the remaining differentiating components the conflicting signs can be safely distinguished, both for consumers with an average degree of attention and especially for the relevant consumers who have a high degree of attention.
Because the similarities between the signs result from the non-distinctive element ‘BUS’, which has a very limited impact, close to no weight whatsoever, when assessing the likelihood of confusion between the signs, it is considered that the similarities between the signs are insufficient to counteract the differences. It can be safely concluded that the relevant public will neither directly confuse the conflicting signs nor perceive them as coming from the same undertaking or economically linked undertakings.
The opponent refers to the principle of interdependence, which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion; the fact that the designated goods are identical cannot, in the present case, compensate for the differences identified between the signs.
Considering all the above, there is no likelihood of confusion on the part of the public in Portugal, for whom the differentiating components of the signs are aurally similar and conceptually neutral, which is the best-case scenario for the opponent.
This absence of a likelihood of confusion equally applies to the part of the public for whom the differentiating elements in the signs, or just one of them, will be understood as meaningful. This part of the public will be less prone to confusion on account of the conceptual differences that put even more distance between the overall impressions of the signs at issue.
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
Cecilie Leth BOCKHOFF
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.