OPPOSITION No B 2 436 676

Evobus GMBH, Vaihingerstraße 131, 70567 Stuttgart, Germany (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX, Weesp, the Netherlands (professional representative)

a g a i n s t

Sitra Holding NV, Ter Waarde 44, 8900 Ieper, Belgium (applicant), represented by Ton van der Reijken, St.-Hubrechtsplein 7 box 1, 8880 Ledegem, Belgium (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 436 676 is partially upheld, namely for the following contested goods:

Class 12: Vehicles; apparatus for locomotion by land.

2.        European Union trade mark application No 13 013 784 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 13 013 784, namely against all the goods in Class 12. The opposition is based on European Union trade mark registration No 430 462. 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.

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1. The goods

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

Class 12:         Land vehicles; parts of land vehicles, in particular seats, upholstery, steering wheels, mirrors, supporting straps for buses and other land vehicles, vehicle windscreens, floor coverings and interior roof linings for land vehicles; accessories for land vehicles, namely wheel caps, luggage carriers, ski carriers, head rests.

The contested goods are the following:

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

An interpretation of the wording of the opponent’s list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 vehicles include, as a broader category, the opponent’s land vehicles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested apparatus for locomotion by land includes, as a broader category, the opponent’s land vehicles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The remaining contested apparatus for locomotion by air or water and the opponent’s land vehicles do not coincide in any of the relevant factors. These goods are manufactured by different producers and are supplied through different distribution channels, as they are means of locomotion in different environments, by air or water (the contested goods) or by land (the opponent’s goods). Consequently, these goods target different consumer circles, and, furthermore, are not in competition with or complementary to each other. For all these reasons, these opponent’s goods, as well as the opponent’s remaining parts of land vehicles, in particular seats, upholstery, steering wheels, mirrors, supporting straps for buses and other land vehicles, vehicle windscreens, floor coverings and interior roof linings for land vehicles; accessories for land vehicles, namely wheel caps, luggage carriers, ski carriers, head rests, are considered dissimilar to the contested goods.

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 or at business customers in the vehicle sector. The goods at issue are rather specialised goods (vehicles and apparatus for locomotion by land, land vehicles and their parts) and are also directed at business customers with specific professional knowledge or expertise.

The goods in question (vehicles) include cars; 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).

In the case of both the general public and business customers, the degree of attention may vary from average to high, depending on the specialised nature of these goods, the frequency of purchase and their price.

3. The signs

SETRA
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 earlier mark, ‘SETRA’, is a word mark composed of a meaningless term, which, as such, is distinctive for the relevant public. Consequently, the word ‘SETRA’ has an average degree of distinctiveness in relation to the goods in question.

The word ‘SITRA’ in the contested figurative mark is written in standard orange bold upper case letters and contains a device in the shape of a bird’s head and neck, which is incorporated in the letters ‘T’ and ‘R’ and links them. It has no semantic connotation in relation to the relevant goods and is therefore distinctive.

The word ‘SITRA’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive. It has an average degree of distinctiveness in relation to the goods in question.

The contested sign has no element that could be considered clearly more dominant (eye-catching) than other elements.

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).

Visually, the signs coincide in the letters ‘S(*)TRA’, present identically in both signs. However, they differ in their second letters, the letter ‘E’ in the earlier mark and the letter ‘I’ in the contested sign. Moreover, the signs are visually differentiated by the bird device and the stylisation and orange colour of the letters in the contested sign.

Therefore, taking into consideration the general principle of the greater importance of verbal elements than figurative elements, which applies to the contested sign, and the fact that the signs coincide in four out of five letters in the same positions, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the letters ‘S(*)TRA’, present identically in both signs. However, they differ in the sounds of their second letters, the letter ‘E’ in the earlier mark and the letter ‘I’ in the contested sign.

Therefore, the marks are aurally similar to a higher than average degree.

Conceptually, neither of the signs has a meaning as a whole. Only the bird device in the contested sign will evoke a concept, that of a bird, in the relevant territory; however, the attention of the relevant public will be attracted by the distinctive verbal element, which has no meaning. Therefore, the signs are not conceptually similar.

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

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods in question are partly identical, partly similar and partly dissimilar. The distinctiveness of the earlier mark is normal. The degree of attention of the general public, and that of business consumers in the locomotion (vehicle production) sector, may vary from average to high.

For the purposes of the global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of 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). Even for goods for which the degree of attention is high, as is the case for some of the goods in this case, consumers need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

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).

The signs are considered visually similar to an average degree and aurally similar to an above average degree, as they coincide almost completely, that is in the letters ‘S*TRA’ of the words ‘SETRA’ and ‘SITRA’. They can be distinguished only by their different second letters, ‘E’ and ‘I’. The signs are not conceptually similar due to the presence of the bird device. Consequently, as in the consumer’s perception of the contested sign the verbal element will play a much greater role than the bird device, these circumstances could clearly lead to a likelihood of confusion.

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.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union registration No 430 462. 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

Francesca CANGERI SERRANO

Birgit FILTENBORG

Andrea VALISA

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.