OPPOSITION No B 2 315 839

TVR Italia S.R.L., via Kennedy, 12, 70053 Canosa (BA), Italy (opponent), represented by Francesca Caricato, Viale delle Rimembranze, 45, 21047 Saronno, Italy (professional representative)

a g a i n s t

TVR Automotive Limited, Wentworth House 4400 Parkway, PO15 7FJ Whiteley, United Kingdom (applicant), represented by Bardehle Pagenberg Partnerschaft Mbb Patentanwälte Rechtsanwälte, Prinzregentenplatz 7, 81675 München, Germany (professional representative).

On 30/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 315 839 is partially upheld, namely for the following contested goods:

Class 12: Motor cars; aerodynamic attachments for vehicle bodies; aerodynamic fairings for vehicles; aero-dynamic fairings for vehicles; aerofoils for air vehicles; aerofoils for land vehicles; aerofoils for sea vehicles; aerofoils for water vehicles; aeronautical apparatus, machines and appliances; aeroplanes; aircraft; amphibious vehicles; apparatus for locomotion by land, air or water; automobiles; automotive vehicles; bicycle frames; bicycles; boats; cars; components for brakes for vehicles; cycles; driving motors for land vehicles; electric motors for land vehicles; electric vehicles; engines for land vehicles; engines for motor land vehicles; equipment trailers; helicopters; jet aircraft; jet boats; land automotive vehicles; motor cycles; motor vehicle bodies; motorbikes; power trains for land vehicles; powerboats; tires; touring land vehicles; tricycles; trucks; vans; vehicle bodies; vehicle body hardware; vehicles for locomotion by land, air, water or rail; watercraft; wheel brakes; wheel rims; wheels; windscreens; yachts; bodywork parts for vehicles.

2. European Union trade mark application No 12 185 922 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 185 922, , namely against the goods in Classes 12 and 25. The opposition is based on European Union trade mark registration No 5 699 954, and on the company name ‘TVR ITALIA’, protected in Italy and the European Union. The opponent invoked Article 8(1)(a) and (b) and Article 8(4) 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, after partial refusal of the trade mark application, are the following:

Class 12: Trucks; mopeds; bicycles; tricycles; tractors; busses; aeroplanes; helicopters; gliders; boats; dinghies; ships; apparatus for locomotion by air or water; fittings for bicycles and motorcycles; parts of boats and aeroplanes.

The contested goods are the following:

Class 12: Motor cars; parts and fittings for motor cars included in class 12; aerodynamic attachments for vehicle bodies; aerodynamic fairings for vehicles; aero-dynamic fairings for vehicles; aerofoils for air vehicles; aerofoils for land vehicles; aerofoils for sea vehicles; aerofoils for water vehicles; aeronautical apparatus, machines and appliances; aeroplanes; aircraft; amphibious vehicles; apparatus for locomotion by land, air or water; automobile bodies; automobile bumpers; automobile chains; automobile chains [anti-skid for wheels]; automobile chains [driving]; automobile chassis; automobile door handles; automobile engines; automobile hoods; automobile oil pans; automobile roof containers; automobile roof racks; automobile tires; automobile wheels; automobile windshield sunshades; automobile windshield wipers; automobile windshields [windscreens]; automobiles; automotive vehicles; bicycle frames; bicycles; boats; cars; components for brakes for vehicles; cycles; driving motors for land vehicles; electric motors for land vehicles; electric motors for motor cars; electric vehicles; engines for automobiles; engines for land vehicles; engines for motor land vehicles; equipment trailers; go carts; helicopters; jet aircraft; jet boats; land automotive vehicles; motor cycles; motor vehicle bodies; motorbikes; power trains for land vehicles; powerboats; racing cars; tires; touring land vehicles; tricycles; trucks; vans; vehicle bodies; vehicle body hardware; vehicles for locomotion by land, air, water or rail; watercraft; wheel brakes; wheel rims; wheels; windscreens; yachts; bodywork parts for vehicles.

Class 25: Clothing, footwear, headgear.

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.

Preliminary remark

The applicant refers to the previous decision of the Office of 14/02/2011 in opposition B 1 313 248, involving the same parties, and considers that the result of the comparison of goods should be the same.

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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions and the current practice at the time the decision was taken. In particular, in relation to the comparison of goods and services, it should be noted that the Office constantly updates and revises its tools as necessary in order to create a comprehensive and reliable source of reference. This exercise may lead to a different outcome.

In view of the above, it follows that, even if the previous decision referred to by the applicant is to some extent factually similar to the present case, the outcome may not be the same.

Contested goods in Class 12

Aeronautical apparatus; aeroplanes; aircraft; apparatus for locomotion by air or water; bicycles; boats; cycles; helicopters; tricycles; trucks; vehicles for locomotion by air or water are identically protected by both marks (including synonyms).

The contested apparatus for locomotion by land; automotive vehicles; land automotive vehicles; vehicles for locomotion by land include as broader categories some of the opponent’s goods, such as trucks. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Likewise, the contested motor cycles; motorbikes include the mopeds protected by the earlier mark. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested electric vehicles overlap with some of the opponent’s goods, such as trucks or bicycles, since these goods can also be electric. They are identical.

The contested amphibious vehicles; jet boats; powerboats; watercraft; yachts, on the one hand, and the contested jet aircraft, on the other hand, are included in, or overlap with, the opponent’s broader categories of apparatus for locomotion by water and apparatus for locomotion by air, respectively. They are identical.

Aerofoils for air vehicles; aeronautical machines and appliances are included in the opponent’s broader category, parts of aeroplanes, and the contested aerofoils for sea vehicles; aerofoils for water vehicles are included in the opponent’s parts of boats. Furthermore, bicycle frames are included in the opponent’s fittings for bicycles. They are all identical.

The contested touring land vehicles overlap with the opponent’s busses. They are therefore identical.

The contested aerodynamic attachments for vehicle bodies; aerodynamic fairings for vehicles; aero-dynamic fairings for vehicles; components for brakes for vehicles; motor vehicle bodies; tires; vehicle bodies; vehicle body hardware; wheel brakes; wheel rims; wheels; windscreens; bodywork parts for vehicles are included in, or overlap with, the opponent’s parts of boats and aeroplanes, and are thus identical.

The contested motor cars; automobiles; cars; vans are similar to the opponent’s trucks. These are all vehicles designed to transport something (persons or merchandises). They coincide in their nature and purpose and they are often produced by the same companies.

The following goods: aerofoils for land vehicles; driving motors for land vehicles; electric motors for land vehicles; engines for land vehicles; engines for motor land vehicles; equipment trailers; power trains for land vehicles; are all different parts and fittings for vehicles, including trucks. These goods are similar to the opponent’s trucks. They are usually produced by the same manufacturers and also coincide in the relevant public and the distribution channels. Furthermore, the goods are complementary.

The contested vehicles for locomotion by rail present some connections with the opponent’s busses. They coincide in their purpose, transport persons or merchandises, and are in competition, since consumers may choose between one or the other to satisfy the same needs. These goods are similar to a low degree.

The contested parts and fittings for motor cars included in class 12; automobile bodies; automobile bumpers; automobile chains; automobile chains [anti-skid for wheels]; automobile chains [driving]; automobile chassis; automobile door handles; automobile engines; automobile hoods; automobile oil pans; automobile roof containers; automobile roof racks; automobile tires; automobile wheels; automobile windshield sunshades; automobile windshield wipers; automobile windshields [windscreens]; electric motors for motor cars; engines for automobiles are dissimilar to the goods covered by the earlier mark, which are not related to cars but to other types of vehicles. These parts and fittings are specifically designed for automobiles and involve different manufacturing processes and specificities. Even if they might coincide in the commercial origin with some of the opponent’s goods, they differ in nature and purpose and are not complementary goods or in competition.

Go carts are small and low cars used for racing or toy cars that you operate with your feet. Racing cars are low cars with a powerful engine and wide wheels, designed for use in races. The nature and purpose of these goods, which is not the transport of persons or goods, clearly differ from those of the opponent’s goods, which cover different means of transport and parts thereof. They target a different public and neither the commercial origin nor the distribution channels coincide. These goods are not complementary or in competition. Therefore, they are dissimilar.

Contested goods in Class 25

The contested goods clothing, footwear, headgear are dissimilar to the opponent’s goods, which are all vehicles and parts thereof. They are different in nature and have different purposes, commercial origin and distribution channels. These goods are not complementary nor in competition.

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 considered identical and similar to varying degrees are directed at the public at large and also at business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. For example, taking into consideration the price of some of the goods, such as trucks, boats or aeroplanes, consumers are likely to pay a higher degree of attention than for less expensive purchases.

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).

Both signs are figurative and consist of the joined letters ‘TVR’ depicted in a fanciful uppercase. In the earlier mark, these letters are underlined by three lines in the colours of the Italian flag, followed by the element ‘ITALIA’ in small characters.

The verbal element ‘ITALIA’ in the earlier mark will be perceived as referring to the geographical origin of the goods and is therefore weak. The three lines also allude to the Italian origin of the goods and are equally weak. Furthermore, ‘TVR’ is a dominant element in the mark (visually outstanding).

Visually, the signs coincide in the element ‘TVR’ which is identically depicted in both, and they only differ in the additional weak and non-dominant elements of the earlier mark, namely ‘ITALIA’ and the three lines.

Therefore, the signs are visually highly similar.

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 ‘TVR’. Since it has been confirmed by case-law that consumers generally only refer to 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 sign will aurally be referred to by only the verbal element ‘TVR’.

Therefore, the signs are aurally identical.

Conceptually, although the public in the relevant territory will perceive the meaning of the word ‘ITALIA’ and the allusion to the Italian flag in the earlier mark, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, since these meaningful elements are not particularly distinctive, this difference is not very relevant.

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, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

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 11 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).

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 the present case, the goods under comparison are partially identical or similar to different degrees and partially dissimilar and the degree of distinctiveness of the earlier mark is average. The marks fully coincide in the element ‘TVR’ which is the dominant and distinctive element of the earlier mark and the only element of the contested sign.

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).

Therefore, the Opposition Division considers that the differences between the marks are not sufficient to outweigh the existing similarities and to safely exclude a likelihood of confusion in this case.

The parties refer to several conflicts regarding their relationship and conflicts regarding the rights on the marks over the past years. In particular, the opponent refers to the fact that the applicant filed the contested trade mark in bad faith. However, this cannot be a basis for the opposition. Article 46 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this article does not include bad faith as a ground for opposition, this point will not be addressed.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 5 699 954.

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, even in relation to the goods found to be similar only to a low degree.

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, whether on its paragraphs (a) or (b) and directed at these goods cannot be successful.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE - ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The opponent claims protection for the company name ‘TVR ITALIA’ protected in Italy and the European Union. An extract from the Milan Chamber of Commerce regarding the denomination ‘TVR ITALIA S.R.L.’ was submitted with the opposition notice.

1. The right under the applicable law

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR (in the version in force at the time when the adversarial part of the proceedings started), if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (Article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit any information on the legal protection granted to the company name invoked by the opponent in Italy or the European Union, which are the territories in which protection was claimed. The evidence showing that the company ‘TVR ITALIA S.R.L.’ was incorporated in Italy is not sufficient to claim protection under Article 8(4) EUTMR. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in the territories mentioned by the opponent. The mere reference to Article 8 of the Paris Convention is not sufficient to demonstrate the conditions for the protection of the claimed company name in Italy or the European Union.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some 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

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

Martina GALLE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.