OPPOSITION No B 2 660 812

CRD Car Research & Development GmbH & Co. KG, Brabus-Allee 246-265, 46240 Bottrop, Germany (opponent), represented by Stenger Watzke Ring Intellectual Property, Am Seestern 8, 40547 Düsseldorf, Germany (professional representative)

a g a i n s t

GG Profits Sp. z o.o., Spacerowa no 6/8, 95-200 Pabianice, Poland (applicant), represented by Agnieszka Plucińska, ul. Maratońska 33/52, 94-102 ŁÓDŹ, Poland (professional representative).

On 03/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 660 812 is partially upheld, namely for the following contested goods:

Class 7:         Joints for tubes (metal -) [parts of engines]; electric motors; injectors; fuel injection systems for engines; petrol injection instruments; fuel injector parts for land and water vehicle engines; spark plugs for vehicle engines; electric ignition apparatus for internal combustion engines; ignition devices for motors of land vehicles; electronic ignitions for vehicles; ignition devices for motors of land vehicles; points [ignition parts for internal combustion engines]; condensers [ignition parts for internal combustion engines]; ignition distributors for internal combustion engines; spark plugs for vehicle engines; ignition wires for motor vehicles; spark plug ignition wires; spark plugs for engines; electronic ignitions for vehicles; electric ignition devices [other than for igniting at a distance]; sparking-plugs; igniting magnetos; electric ignition coils; spark plugs for land vehicle engines.

Class 9:         Apparatus, instruments and cables for electricity; connection cables; jump leads; jump leads; jump leads; power cables; electronic cables; electric cables; ignition cables; connecting electrical cables; adapter cables (electric -); cables and wires; starter cables for motors; rubber covered electrical wires; electrical cables for use in connections; battery booster cables; mains power units (electric -); electric and electronic components; piezoelectric igniters; ignition cables; junction boxes [electricity]; ducts [electricity]; electrical cabling; ignition cables; ignition cables; electricity conduits; insulated electrical cables; cables and wires; ignition spark detectors.

2.        European Union trade mark application No 14 527 881 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 all the goods of European Union trade mark application No 14 527 881. The opposition is based on European Union trade mark registration No 3 161 651. 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.

1. The goods

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

Class 7: Exhaust systems, namely fan-type manifolds, center parts and tail-end silencers and mufflers.

Class 12: Motor vehicles and their parts; accessories for motor vehicles, namely motor vehicle tires and rims; springs; shock absorbers spring struts for motor vehicle chassis; gearshift levers and gearboxes for motor vehicles; steering wheels; seats and head restrains for vehicle; spoiler; side covering and lateral paneling; tail aprons.

The contested goods are the following:

Class 7: Workpiece clamping attachments [parts of machines]; joints for tubes (metal -) [parts of machines]; joints for tubes (metal -) [parts of engines]; electric motors; reels [parts of machines]; injectors; fuel injection systems for engines; petrol injection instruments; fuel injector parts for land and water vehicle engines; spark plugs for vehicle engines; electric ignition apparatus for internal combustion engines; ignition devices for motors of land vehicles; electronic ignitions for vehicles; ignition devices for motors of land vehicles; points [ignition parts for internal combustion engines]; condensers [ignition parts for internal combustion engines]; ignition distributors for internal combustion engines; spark plugs for vehicle engines; ignition wires for motor vehicles; spark plug ignition wires; spark plugs for engines; electronic ignitions for vehicles; electric ignition devices [other than for igniting at a distance]; sparking-plugs; igniting magnetos; electric ignition coils; spark plugs for land vehicle engines.

Class 9: Apparatus, instruments and cables for electricity; apparatus and instruments for controlling electricity; connection cables; jump leads; jump leads; jump leads; measuring cables; power cables; electronic cables; electric cables; ignition cables; connecting electrical cables; adapter cables (electric -); cables and wires; starter cables for motors; rubber covered electrical wires; electrical cables for use in connections; battery booster cables; galena crystal detectors for use in electronics; mains power units (electric -); electric and electronic components; uninterruptable power supply apparatus; uninterruptible power supply apparatus [battery]; regulated power supply apparatus; power-line transmission apparatus; electricity mains apparatus; piezoelectric igniters; photovoltaics; ignition cables; junction boxes [electricity]; ducts [electricity]; electrical cabling; ignition cables; measuring tapes; batteries for lighting; batteries for lighting; ignition cables; electricity conduits; insulated electrical cables; cables and wires; ignition spark detectors.

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

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 7

The contested joints for tubes (metal -) [parts of engines]; electric motors; injectors; fuel injection systems for engines; petrol injection instruments; fuel injector parts for land and water vehicle engines; spark plugs for vehicle engines; electric ignition apparatus for internal combustion engines; ignition devices for motors of land vehicles; electronic ignitions for vehicles; ignition devices for motors of land vehicles; points [ignition parts for internal combustion engines]; condensers [ignition parts for internal combustion engines]; ignition distributors for internal combustion engines; spark plugs for vehicle engines; ignition wires for motor vehicles; spark plug ignition wires; spark plugs for engines; electronic ignitions for vehicles; electric ignition devices [other than for igniting at a distance]; sparking-plugs; igniting magnetos; electric ignition coils; spark plugs for land vehicle engines are parts of motors and engines for vehicles. To that extent, they are similar to the opponent’s exhaust systems, namely fan-type manifolds, center parts and tail-end silencers and mufflers since they can originate from the same manufacturer and are likely to be distributed through the same provider as well. Furthermore, the end consumer can also coincide.

The same relation cannot be established with regard to the contested workpiece clamping attachments [parts of machines]; joints for tubes (metal -) [parts of machines]; reels [parts of machines]. Indeed, as indicated, these goods are parts of machines and machines are apparatuses used to do a particular kind of work. Although different types of machinery are used by professionals of the automotive industry, to assemble parts of engines or vehicles for instance, this is not sufficient to establish a similarity with the opponent’s goods in Classes 7 and 12; the opponent’s goods in Class 12 being parts of motorized vehicles. Contrary to the goods previously compared, neither manufacturers nor providers are likely to coincide. Furthermore, they have a different nature and purpose and are not complementary. Therefore, these goods are dissimilar to the opponent’s goods in Classes 7 and 12.

Contested goods in Class 9

The contested apparatus, instruments and cables for electricity; connection cables; jump leads; jump leads; jump leads; power cables; electronic cables; electric cables; ignition cables; connecting electrical cables; adapter cables (electric -); cables and wires; starter cables for motors; rubber covered electrical wires; electrical cables for use in connections; battery booster cables; mains power units (electric -); electric and electronic components; piezoelectric igniters; ignition cables; junction boxes [electricity]; ducts [electricity]; electrical cabling; ignition cables; ignition cables; electricity conduits; insulated electrical cables; cables and wires; ignition spark detectors are similar to the opponent’s motor vehicles in Class 12 as they can coincide in end user and distribution channels. Furthermore, they are complementary.

However, although some of the remaining contested goods might be used in the automotive industry, the Opposition Division considers that the minimum criteria to establish similarity with the opponent’s goods in Class 7 and 12 are not fulfilled because they are goods of different natures and serving different purposes. Furthermore, manufacturers and distribution channels will usually not coincide. And finally, they are neither complementary nor in competition with each other. Therefore, the contested apparatus and instruments for controlling electricity; measuring cables; galena crystal detectors for use in electronics; uninterruptable power supply apparatus; uninterruptible power supply apparatus [battery]; regulated power supply apparatus; power-line transmission apparatus; electricity mains apparatus; photovoltaics; measuring tapes; batteries for lighting; batteries for lighting are dissimilar to any of the opponent’s goods in Classes 7 and 12.

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 similar are directed at business customers with specific professional knowledge or expertise. Some of these goods, such as the spark plugs for vehicle engines, can also be directed at the public at large having some knowledge in mechanics.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

STARTECH
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Although the average consumer normally perceives a mark as a whole and does 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, the average consumer understanding English will recognize the common elements ‘STAR’ and TECH’ that are meaningful. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Indeed, not only the element ‘STAR’ included in both signs, will be understood as a large ball of burning gas in space or as a reference to a famous person but also, according to the General Court, it is understood by a large part of the relevant public, as a laudatory term which emphasises the quality of the goods (07/07/2015, T-521/13, A ASTER / A-STARS, EU:T:2015:474, § 45, 48). Thus, this element is considered allusive and has a degree of distinctiveness below average.

Furthermore, the element ‘TECH’, also included in both signs, is widely used as an abbreviation of the word ‘technology’. Bearing in mind that the relevant goods are technology-related, this element is weak for these goods as it may inform the consumer about their nature and characteristics.

Visually and aurally, the signs coincide in the element ‘STARTECH’ which is the sole word in both signs. The signs only differ visually in the white colour used to represent the verbal element in the contested sign and in its purple background which have no counterparts in the earlier word mark. Such stylization is not particularly elaborate or sophisticated and is of a purely decorative nature. Therefore, it has a limited impact when assessing the likelihood of confusion between the marks. In any event, it should be borne in mind that 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).

Consequently, and despite the limited degree of distinctiveness of the words composing the element ‘STARTECH’, the signs are visually highly similar and aurally identical.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘STAR’ and ‘TECH’, included in both signs, will be associated with the meanings given above. To that extent, the signs are conceptually identical.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as minimal.

5. 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).

In the present case, part of the contested goods is similar to the opponent’s goods and part is dissimilar. Furthermore, the earlier mark, which only consists of a single word, is entirely reproduced in the contested sign. As already mentioned, the components of this word are of reduced distinctiveness and although it is true that a coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact. The applicant argues that the ‘addition of a completely different word element or graphic element creates a new mark with distinctive character’. Nevertheless, in the present case, the sole differentiating elements are the colours and the rectangular background of the contested sign. As already mentioned, these components are considered to have a very limited impact given their decorative and secondary nature and are not considered sufficient to counteract the obvious similarities between the signs.

Account is also 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, § 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).

In view of the above, the Opposition Division considers it likely for the relevant public to believe that the goods found to be similar come from the same undertaking or, as the case may be, from economically linked undertakings. Indeed, the consumer could perceive the contested sign as a sub-brand or a re-brand of the opponent especially when the contested goods have been found similar.

Furthermore, 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).

In its observations, the applicant also argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘STARTECH’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘STARTECH’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be 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

Martina GALLE

Sandra IBAÑEZ

Begoña URIARTE

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.