actimax | Decision 2603044
Date Published: May 1, 2018
OPPOSITION No B 2 603 044
Huijuan Cao, Room 402, No. 38, No.41 Nong, Liangfeng Street, Haishu District, Ningbo City, Zhejiang, People's Republic of China (opponent), represented by Office Kirkpatrick N.V./S.A., Avenue Wolferslaan, 32, 1310 La Hulpe – Terhulpen, Belgium (professional representative)
a g a i n s t
Magna Powertrain GmbH & Co KG, Industriestr. 35, 8502 Lannach, Austria (applicant), represented by Gabriele Rausch, Heidehofstrasse 6, 70184 Stuttgart, Germany (professional representative).
On 12/01/2017, the Opposition Division takes the following
1. Opposition No B 2 603 044 is upheld for all the contested goods and services.
2. European Union trade mark application No 14 402 663 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 402 663. The opposition is based on international trade mark registration No 1 213 463 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 and services
The goods on which the opposition is based are the following:
Class 7: Steam condensers (parts of machines); automobile motor igniting coil; automobile motor cooling fan clutch; automobile motor cooling radiator; lubricating filter; automobile motor piston; belts for motors and engines; compressors (machines); automobile oil pump; automobile water pump.
Class 11: Radiator caps; evaporators; air conditioners for vehicles; filters for air conditioning; pipe joint for water heating equipment; lights for automobiles; air conditioning apparatus; heating apparatus for defrosting windows of vehicles; heaters for vehicles; ventilation (air-conditioning) installations for vehicles.
Class 12: Automobile chassis; suspension shock absorbers for vehicles; clutches for land vehicles; hydraulic circuits for vehicles; brakes for vehicles; propulsion mechanisms for land vehicles; bodies for vehicles; transmission shafts for land vehicles; direction signals for vehicles; shock absorbers for automobiles.
The contested goods and services are the following:
Class 12: Parts and fittings for vehicles, namely rear axle modules, transfer cases, four-wheel drives, four-wheel drive products for longitudinal and transverse motors, mass balancing systems, transmission and clutch modules, clutch housings, shafts and toothed components, oil sumps, gearwheels, drives for auxiliary units, vacuum pumps, water pumps, transmission oil pumps, engine oil pumps.
Class 42: Scientific and technological services and research, namely development of utility vehicles, development of drive trains, engineering in relation to vehicle construction.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘namely’, used in the applicant’s list of goods and services 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 and services.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 goods in Class 12 are specialised parts and fittings for vehicles. The relevant public for these goods is composed of professionals, that is, mechanics and car manufacturers. The goods in question are either parts of engines or devices installed in vehicles. As explained above, where the term ‘namely’ is used in the list of goods, it narrows the scope of protection of the contested sign to the precise list of goods, that is, rear axle modules, transfer cases, four-wheel drives, four-wheel drive products for longitudinal and transverse motors, mass balancing systems, transmission and clutch modules, clutch housings, shafts and toothed components, oil sumps, gearwheels, drives for auxiliary units, vacuum pumps, water pumps, transmission oil pumps, engine oil pumps.
The contested shafts include, as a broader category, the opponent’s transmission shafts for 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 rear axle modules consist of a central shaft for a rotating wheel or gear with usually its housing and other components. The contested transfer cases are a part of the drivetrain of four-wheel-drive, all-wheel-drive, and other multiple powered axle vehicles. The contested four-wheel drives, four-wheel drive products for longitudinal and transverse motors are drivetrains capable of providing power to all wheel ends of a two-axled vehicle simultaneously. The contested mass balancing systems are devices for vehicles that adjust the mass distribution of a rotor to diminish journal vibrations and control the forces on the bearings from eccentric loading. The contested transmission and clutch modules, clutch housings, toothed components are transmission and clutch devices for vehicles. The contested gearwheels are toothed wheels that engage another toothed mechanism in order to change the speed or direction of transmitted motion. The contested drives for auxiliary units are part of a transmission system for vehicles. These goods are highly similar to the opponent’s transmission shafts for land vehicles as these goods coincide in producers, end users and distribution channels. Moreover, they are complementary.
The contested oil sumps are reservoirs of oil used to lubricate the engine's moving parts. The contested vacuum pumps are fitted on the engines (usually on the camshafts) to produce vacuum, for example in hybrid and diesel engine motor vehicles. The contested water pumps for vehicles are devices whose purpose is to push coolant through the car's engine block, radiator and hoses to get the engine heat away from the system. The contested transmission oil pumps circulate transmission fluid through the valve body, which in turn controls the clutches and the bands that control the planetary gear sets. The contested engine oil pumps in internal combustion engines circulate engine oil under pressure to the rotating bearings, the sliding pistons and the camshaft of the engines. These goods are highly similar to the opponent’s hydraulic circuits for vehicles which are systems comprising an interconnected set of discrete components that transport liquid, for example in different components of an engine in a vehicle. Indeed, these goods may coincide in producers, end users and distribution channels. Moreover, they are complementary.
Contested services in Class 42
The contested scientific and technological services and research, namely development of utility vehicles, development of drive trains, engineering in relation to vehicle construction are essentially services of engineers related to the development and engineering of vehicles and drive trains. The opponent’s goods in Classes 7, 11 and 12 are mainly different devices and parts of machines, engines and/or vehicles.
The automotive industry is a complex industry involving various kinds of companies, including car manufacturing companies as well as suppliers that might provide the car manufacturer with their raw materials (metal, aluminium, plastics, paints, etc.), parts, modules or complete systems. Several areas of production can be distinguished: drive engineering, chassis, electronics, interior and exterior.
In the present case, the earlier mark protects for example bodies for vehicles. As automobile chassis and vehicles may be designed, engineered and produced by the same company, there is a certain connection between the contested development of utility vehicles, engineering in relation to vehicle construction and the opponent’s bodies for vehicles. These goods and services are similar to low degree since they may share the same commercial origin (producer/provider) and relevant public.
The contested development of drive trains and the opponent’s transmission shafts for land vehicles also coincide in the same commercial origin (producer/provider) and relevant public. Therefore, these goods and services are similar to low degree.
- 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 and services found to be identical or similar to different degrees may be in some cases directed at the public at large but are mainly specialised goods and services directed at business customers with specific professional knowledge or expertise. The degree of attention is considered to be high because the relevant goods and services are usually expensive and highly specialised.
- 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).
The earlier mark is a figurative mark consisting of the verbal element ‘ACTECMAX’ written in stylised black upper case lettering.
The contested sign is a figurative mark consisting of the verbal element ‘ACTIMAX’ written in a stylised lower case typeface with the components ‘ACTI’ depicted in red and ‘MAX’ in black.
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 (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). In this sense, although the signs as a whole have no meaning, the suffix ‘MAX’ is an abbreviation for the internationally known word ‘maximum’, which means ‘the most significant, highest, furthest, or greatest thing’ (information extracted on 10/01/2017 from Collins Dictionary at http://www.collinsdictionary.com/dictionary/english/max and Eesti Keele Instituut Dictionary at http://portaal.eki.ee/dict/ies/). Therefore, in both signs, this component will be perceived by the relevant public as a superlative of the object it accompanies, and, therefore, as laudatory.
Contrary to the verbal component ‘ACTEC’ of the earlier mark, which has a normal distinctive character because it does not have a clear meaning in relation to the relevant goods for the public in the relevant territory, the element ‘ACTI’ in the contested sign, depicted in red, will be easily associated by a large part of the relevant public with the meaning of ‘active’. Bearing in mind that the relevant goods and services are parts and fittings for vehicles, essentially transmission devices, and engineering and development of vehicles and drive trains, ‘ACTI’ of the contested sign is considered weak for these goods and services as regards part of the relevant public, because it may indicate that the related goods incorporate technology actively and automatically adjusted. For part of the public, such as for Lithuanian consumers, no clear meaning will be given to the element ‘ACTI’. In such a case, this element has a normal distinctive character.
The signs have no element that could be considered clearly more dominant (visually eye-catching).
Visually, the signs coincide in the sequence of letters ‘ACT*( )MAX’, namely in six out of eight letters in the earlier mark and out of seven letters in the contested sign. However, they differ in the letters ‘EC’ of the earlier mark and ‘I’ of the contested sign, placed in the middle of the signs. The signs also differ in the typographic stylisation of the signs and in the colour red used in the contested sign.
Regarding the slightly fancy typefaces in which the earlier mark and the contested one are written, these are not particularly elaborate or sophisticated and it will not lead the consumer’s attention away from the elements it seems to embellish.
The first parts of the conflicting marks coincide. 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.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters
/A-C-T-*-( )-M-A-X/, present identically in both signs. The pronunciation differs in the sounds of the letters /E-C/ of the earlier sign and /I/ of the contested sign.
Therefore, although part of the coincidences stands in the weak component ‘MAX’, the signs are aurally highly similar. Indeed, on the one hand, the signs are relatively long and most of their letters coincide, in particular in their beginnings and endings and, on the other hand, the differences are located in the middle of the signs which tends to make them less noticeable. Moreover, both signs have three syllables and have a very similar rhythm and intonation.
Conceptually, the public in the relevant territory will perceive the element ‘MAX’ in both signs with the meaning of ‘maximum’. The largest part of the public in the relevant public will perceive the meaning of ‘active’ in the component ‘ACTI’ of the contested sign. The first part ‘ACTEC’ of the earlier mark has no meaning.
As the signs will be associated with a similar meaning, the signs are conceptually similar, but only to a low degree, because this coincidence lies in a weak element, namely the verbal element ‘MAX’.
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
Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).
The goods and services are partly identical and partly similar to different degrees. They target the public at large and/or business customers and the degree of attention is high. The signs are visually similar to an average degree and highly similar from the aural point of view. The signs are also conceptually similar, but only to a low degree, because the coincidence lies in a weak element.
Finally, it should be recalled that the fact that the element ‘MAX’ has a low degree of distinctiveness does not prevent it from contributing to making the signs confusingly similar, also bearing in mind that the differences between the signs appear to be much less numerous than the coincidences. In fact, the weak distinctive character of an element of a mark does not necessarily imply that that element will not be taken into account by the relevant public, if it has a significant impact to its dimension or position (10/07/2012, T 135/11, Cloralex, EU:T:2012:356, § 35 and 36 confirmed by 30/01/2014, C 422/12 P, Cloralex, EU:C:2014:57). Account is 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 with 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). Therefore, the visual similarity to an average degree, the high aural similarity and, to a lesser extent, the low degree of conceptual similarity between the signs are, on the basis of the whole, sufficient to consider that the signs are likely to create confusion in the mind of the public, even for the goods and services considered similar to a low degree only.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 213 463 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods and services.
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
Chantal VAN RIEL
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.