OPPOSITION No B 2 720 350
Daimler AG, Mercedesstr. 137, 70327 Stuttgart, Germany (opponent), represented by Daimler AG, Sandra Mangold, Intellectual Property & Technology Managment GR/VI – H512, 70546 Stuttgart, Germany (employee representative)
a g a i n s t
Shenzhen Hometech Technology Co.,Ltd., Floor 9 Block A, Tsinghua Hi-tech Park Keyuan North Road, Nanshan District, Shenzhen City, Guangdong province, people’s republic of China (applicant), represented by Zhaoffice Sprl, rue de Bedauwe 13, 5030 Gembloux, Belgium (professional representative).
On 10/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 720 350 is upheld for all the contested goods, namely electric vehicles in Class 12.
2. European Union trade mark application No 15 213 234 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 320.
REASONS:
The opponent filed an opposition against some of the goods in Class 12 of European Union trade mark application No 15 213 234. The opposition is based on German trade mark registration No 39 758 470. The opponent invoked Article 8(1)(a) and (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: Automobiles and their parts (as included in Class 12).
The contested goods are the following:
Class 12: Electric vehicles.
The contested electric vehicles overlap with the opponent’s automobiles and are therefore, 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 also at a professional public in the field of transportation or car renting for instance.
In the case of electric vehicles and automobiles, taking into account their price, 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 regardless of being solely electrical, hybrid or conventionally fuel driven, 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
|
+PASSION |
PASSION |
|
Earlier trade mark |
Contested sign |
The relevant territory is Germany.
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 ‘PASSION’, included in both signs is a word of Latin origin which will be perceived by the relevant public as referring to an intense feeling or impulse. Since this term has no relation with the relevant goods, it has an average degree of distinctiveness.
The element ‘+’ of the earlier mark is a mathematical symbol that implies a concept of increase and will be associated by the relevant public with the idea of added value or of increased quantity or quality, so it only enjoys a weak distinctive character. The element ‘PASSION’ is therefore, the most distinctive element of the earlier sign.
Visually and aurally, the signs coincide in ‘PASSION’ and only differ in the weak element ‘+’ of the earlier mark, which will likely be pronounced as ‘plus’ by the relevant public. Therefore, the signs are visually and aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning with the only difference of the reinforcing meaning of increase given by the weak element ‘+’, the signs are conceptually identical or at least highly similar.
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 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 weak element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
Given the high degree of visual, aural and conceptual similarity existing between the signs and the fact that the only difference between them lies in the weak element ‘+’ of the earlier mark, it is considered that this difference between the signs is not sufficient to counteract the similarities between them. Considering all the above, and taking into account that the goods are identical there is a likelihood of confusion on the part of the public even for goods for which the relevant public will display a higher degree of attention, since in any event the consumers of these goods will also have to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).
Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 39 758 470. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
|
André BOSSE |
Ana MUÑIZ RODRIGUEZ |
Janja FELC |
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.