OPPOSITION No B 2 735 770

Honda Motor Co., Ltd., 1-1, Minami-Aoyama 2-chome, Minato-Ku, Tokyo 107-8556, Japan (opponent), represented by Brevalex, 95, rue d'Amsterdam, 75378 Paris Cedex 8, France (professional representative)

a g a i n s t

Riginos Yachts Ανωνυμη Εμπορικη Και Μεσιτικη Εταιρεια, Περγάμου 27, 16675  Γλυφάδα, Greece (applicant), represented by Vasileios Ikonomidis, Vassilissis Sofias Ave. 112, 11527 Athens, Greece (professional representative).

On 23/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 735 770 is upheld for all the contested goods.

2.        European Union trade mark application No 15 419 609 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 15 419 609 . The opposition is based on inter alia, European Union trade mark registration No 3 310 034. The opponent invoked Article 8(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 European Union trade mark registration No 3 310 034.

1. The goods and services

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

Class 7:        Motors and engines (except for land vehicles); machine couplings and transmission components (except for land vehicles); and parts and fittings for the above mentioned goods, included in international class 7.

Class 12:        Vehicles; apparatus for locomotion by land, air or water; and parts and fittings for the above-mentioned goods, included in international class 12.

Class 37:        Repair; installation services; the aforementioned services not including the construction, repair and installation of heat exchangers for refrigeration used in buildings or air conditioning systems used in building.

The contested goods are the following:

Class 12:        Personal watercraft; marine vehicles; dinghies; launches; motor water vehicles; powerboats; ships; seacraft; vessels [boats and ships]; leisure boats; recreational jet boats; inflatable boats; parts and fittings for water vehicles.

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 12

The contested personal watercraft; marine vehicles; dinghies; launches; motor water vehicles; powerboats; ships; seacraft; vessels [boats and ships]; leisure boats; recreational jet boats; inflatable boats are included in the broad category of the opponent’s apparatus for locomotion by water. Therefore, these goods are identical.

The remaining contested parts and fittings for water vehicles are included in the broad category of the opponent’s parts and fittings for the above-mentioned goods (vehicles; apparatus for locomotion by land, air or water). These goods are identical.

In the observations filed with the Office on 20/02/2017 the applicant claims that the opponent’s uses its earlier marks only for part of the goods and services for which the earlier marks were registered, namely for outboard engines in Class 7 and it does not use its earlier marks for the remaining goods and services for which they were registered. In this context the Opposition Division notes that the Office does not require ex officio whether the earlier mark has been used and for which goods and services. Such examination takes place only when the EUTM applicant makes an explicit request for proof of use. Such a request, if the legal requirements are met, triggers the procedural and substantive consequences laid down in the EUTMR and EUTMIR. In the case at hand the applicant did not request explicitly that the opponent provides the proof of use of its earlier rights on which the present opposition is based and, therefore, the applicant’s argument must be put aside.

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 attentiveness 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 the professional public in relation to marine vehicles with specific professional knowledge and expertise. Taking into consideration the price of the goods in question, 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 boat, either new or second-hand, in the same way as they would buy articles purchased on a daily basis.

3. The signs

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public, for which the letter ‘H’ is silent.

Both marks are figurative marks. The earlier mark is composed of the verbal element ‘HONDA’, written in rather standard uppercase letters in bold. The contested sign is formed by the verbal element ‘Superonda’, written in slightly stylised italic title case letters.

The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51).

Therefore, the relevant public will perceive the single word ‘super’ in the contested sign as referring to something extraordinary, great. This element will be regarded as laudatory in terms of the quality of the relevant goods. The relevant public understands the meaning of this element and will not pay as much attention to this non-distinctive element as to the other, meaningless, more distinctive element of the contested sign ‘onda’. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the signs at issue. (Definition extracted from Larousse Encyclopedie online, at http://www.larousse.fr/encyclopedie/divers/super, on 10/08/2017).

The verbal element ‘HONDA’ has no meaning for the relevant public and, therefore, is distinctive in relation to the goods in question.

The marks in question have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually the signs coincide in the letters forming the distinctive part of the contested sign ‘ONDA’ and they differ in the first letter ‘H’ and in the term ‘Super’, which is ,however, non-distinctive in relation to the goods in question. The stylisation of the letters in the contested sign will only have a minor impact on the consumers when assessing the likelihood of confusion between the signs.

Therefore, considering all the above, it is considered that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ONDA’. The letter ‘H’ of the earlier mark is silent in the French language. The signs differ phonetically in the sound of the element ‘Super’, which is however non-distinctive in relation to the goods in question. The remaining figurative element (stylisation of the letters in the contested sign) is not a subject of the aural comparison. Consequently, the signs are aurally similar to a high degree.

Conceptually, the public in the relevant territory will be aware of the semantic content of the element ‘Super’ of the contested sign, which, however, due to its non-distinctive character will have a very limited impact on the assessment of the likelihood of confusion. The elements ‘HONDA’ of the earlier mark and the remaining element ‘onda’ of the contested sign have no meaning for the relevant public in the relevant territory. Consequently, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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

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 contested goods are identical to the ones covered by the earlier mark. The level of attention of the relevant public will be higher than average.

The signs are visually similar to an average degree and aurally they are highly similar on the account of the letters constituting the element ‘ONDA’. This common element constitutes the most distinctive part of the contested sign and aurally forms in its entirety the earlier mark. The remaining differentiating elements are limited to the letter ‘H’ (only visually), the non-distinctive element ‘Super’ of the contested sign and the figurative elements (stylisation of letters), which, however, are not sufficient to differentiate the signs effectively.  

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). 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).

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. This principle applies to the present case because the goods in question are identical.

Considering all the above and the identity between the conflicting goods, the Opposition Division finds that there is a likelihood of confusion, on the part of the French-speaking part of the public. Therefore, the opposition is well founded on the European Union trade mark registration No 3 310 034. 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.

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.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings because the signs referred to by the applicant are not comparable. In the present case the relevant public in the relevant territory will notice the laudatory character of the element ‘super’ within the contested sign and, therefore, the relevant consumer will focus its attention on the remaining element ‘onda’. This situation does not apply to the case mentioned by the applicant in its observations.

As the earlier European Union trade mark registration No 3 310 034 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).

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 grounds 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

Judit NÉMETH

Monika CISZEWSKA

Adriana VAN ROODEN

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.