ORIBI | Decision 1655771 - ORIBAY MIRROR BUTTONS, S.L. v. IVO-KERMARTIN GmbH
Date Published: Oct 11, 2017
OPPOSITION No B 1 655 771
Oribay Mirror Buttons, S.L., Portuetxe Bidea, 18, 20018 San Sebastián (Guipúzcoa), Spain (opponent), represented by Oficina de Propiedad Industrial Gil Vega, C/ Corazón de María, 6, 4ª Plta., 28002 Madrid, Spain (professional representative)
a g a i n s t
Segimerus Limited, Unit 10, 80 Lytham Road, Fulwood, Preston PR2 3AQ, United Kingdom (applicant), represented by Erich Auer, Unit 10, 80 Lytham Road, Fulwood, Preston PR2 3AQ, United Kingdom (professional representative).
On 22/03/2017, the Opposition Division takes the following
1. Opposition No B 1 655 771 is upheld for all the contested goods, namely:
Class 12: Vehicles.
2. European Union trade mark application No 8 512 196 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against some of the goods of European Union trade mark application No 8 512 196, namely against all the goods in Class 12. The opposition is based on European Union trade mark registration No 3 611 282. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The applicant requested that the opponent submit proof of use of European Union trade mark registration No 3 611 282 on which the opposition is based.
In the present case the contested trade mark was published on 22/02/2010.
Earlier European Union trade mark No 3 611 282 was registered on 22/06/2005.
Therefore, the request for proof of use is inadmissible. The parties were notified of this on 07/01/2011.
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, after a decision of partial revocation of the earlier trade mark, which has now become final, are the following:
Class 12: Accessories for vehicle windows and windscreens.
The contested goods, after a limitation of the contested trade mark on 03/03/2016, are the following:
Class 12: Vehicles.
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 vehicles and the opponent’s accessories for vehicle windscreens, which cover goods such as windscreen wipers, may have the same producers and distribution channels. They target the same public and are complementary. Therefore, they are similar.
For reasons that will become apparent below, it is noted that the opponent’s category of accessories for vehicle windscreens also covers, inter alia, windscreen mirror buttons (the part of the rear-view mirror that is glued to the windscreen and serves as a support), which are also similar to the contested vehicles, for the same reasons as above.
- 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 the public at large.
The degree of attention is usually high for the contested vehicles, which are expensive and infrequently purchased. Some of the opponent’s accessories for vehicle windscreens may be used for safety; for instance, windscreen wipers are used to improve visibility during rainy weather, and mirror buttons are used to secure the rear-view mirror to the windscreen.
As regards parts that serve to ensure the safety of vehicles’ users, the Court has established that the consumer will pay particular attention to them. The Court has also indicated that, when purchasing goods whose use implies that they must be compatible with the vehicle so that they may be attached to the vehicle and/or to ensure their proper functioning, the degree of attention of the consumer is also high. According to the Court, vehicle parts that are for purely decorative purposes imply aesthetic appraisal by the relevant consumers, which entails a high degree of attention on their part (22/03/2011, T-486/07, CA, EU:T:2011:104, § 34-38).
Insofar as the relevant opponent’s goods include parts that serve to ensure the safety of a vehicle’s users and/or must be compatible with the vehicle, the relevant consumer will display a high degree of attention when purchasing them.
- The signs
Earlier trade mark
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 relevant territory is the European Union.
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, for linguistic reasons, which will become apparent below, the English-speaking public is the part of the public that is most prone to a likelihood of confusion. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The contested sign consists of the meaningless, distinctive element ‘ORIBI’.
The earlier mark is a figurative mark including the verbal element ‘ORIBAY’ in large blue standard upper case letters and under it, in much smaller title case letters, the verbal expression ‘ORIginal Buttons for Automotive Yndustry’, in which the initial letters of each word (‘ORI’, ‘B’, ‘A’ and ‘Y’) are blue whereas the remaining letters are black.
The element ‘ORIBAY’ is clearly the dominant element of the earlier mark, since it is significantly larger than the expression underneath. It is meaningless and, thus, distinctive.
In contrast, the expression ‘ORIginal Buttons for Automotive Yndustry’ has an obvious and immediate meaning in English, despite the misspelling of the word ‘Industry’ as ‘Yndustry’. It lacks distinctive character in that it indicates the nature and quality of the goods at issue, namely the fact that they are (mirror) buttons for motor vehicles manufactured by the official contractor of the vehicles’ manufacturer. The expression is also extremely weak for parts other than buttons because it indicates that the opponent operates in the field of original accessories, such as buttons, for motor vehicles.
Visually, the signs coincide in the letters ‘ORIB’, namely the first four letters of the contested sign and of the clearly dominant and distinctive verbal element of the earlier mark. They differ in the latter’s final two letters, the last letter of the contested sign and the additional verbal expression of the earlier mark. Furthermore, the signs differ in the blue colour used in the earlier mark.
The elements ‘ORIBAY’ and ‘ORIBI’ are approximately the same length, and the coinciding letters are placed at their beginnings. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.
The difference arising from the verbal expression of the earlier mark is of very limited impact given its descriptive nature and the fact that it is much smaller than the element ‘ORIBAY’.
The colour used in the earlier mark is a purely decorative feature that has very little differentiating impact.
Therefore, the signs are visually similar to a high degree.
Aurally, since it has been confirmed by case-law that consumers generally refer to only the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and, in any case, that they tend to shorten marks containing several words, it is highly likely that the earlier trade mark will be referred to orally by only the verbal element ‘ORIBAY’, pronounced as /o-ri-bɛi/. The contested sign will be pronounced as /o-ri-bai/ by analogy with the pronunciation of the English word ‘alibi’.
Both signs contain three syllables. The first two syllables are identical and the third syllables are highly similar because they consist of three sounds, of which the first and the third are identical. The difference between the signs lies in only one sound in a position that does not make it particularly noticeable.
Therefore, the signs are aurally similar to a high degree.
Conceptually, the signs are not similar because only the earlier mark conveys a concept. However, since this concept is related to the non-distinctive expression, the ensuing difference has hardly any impact on the assessment.
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 non-distinctive element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
Likelihood of confusion 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).
In the present case, the contested goods are similar to those of the opponent and the degree of attention of the public for such goods is high. The signs are visually and aurally highly similar, and the concept conveyed by the earlier mark does not create a significant difference between them. The earlier mark enjoys a normal scope of protection on account of its average distinctive character.
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 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).
According to the Opposition Division, the English-speaking public is highly likely to confuse the elements ‘ORIBI’ and ‘ORIBAY’ of the signs and, in the absence of any significant differences in other elements, this results in a likelihood of confusion between the signs on the part of that public, even when it displays a high degree of attention. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 611 282. It follows that the contested trade mark must be rejected for all the contested goods.
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
Pedro JURADO MONTEJANO
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.