OPPOSITION No B 2 342 858

Redcar, S.L., Indic, Nº 106, Zal Puerto De Barcelona, 08040 Barcelona, Spain (opponent), represented by Morgades, del Rio, Renter, S.L., Calle Rector Ubach, 37-39, bajos 2ª, 08021 Barcelona, 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 04/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 342 858 is partially upheld, namely for the following contested goods:

Class 12: Motorised land vehicles, other than parts therefor and other than bicycles and parts and fittings for bicycles.

2. European Union trade mark application No 12 240 611 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 some of the goods and services of European Union trade mark application No 12 240 611, namely against all the goods in Class 12 and some of the services in Class 35. During the opposition proceedings the applicant limited its application; therefore, the opposition is now directed against only all the remaining goods in Class 12. The opposition is based on Spanish trade mark registration No 423 695. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARKS

The Office gave the applicant until 28/12/2014 to submit its observations. Since the Office was closed from 28/12/2014 to 01/01/2015, inclusive, due to public holidays, the applicant’s time limit to submit observations was extended to 02/01/2015, which was the next working day for the Office, in accordance with Decision EX-14-5 of the President of the Office of 12/12/2014 concerning the days on which the Office is not open for the receipt of documents and on which ordinary mail is not delivered.

The applicant submitted its observations on 05/01/2015. They are, therefore, late.

The applicant asked the Office to use its discretionary power under Article 76(2) EUTMR and to take into account the belated observations. It refers to judgments of 26/09/2014, T‑445/12, Kw surgical instruments, EU:T:2014:829; 01/07/2014, T‑480/13, YouView+, EU:T:2014:591; and 24/10/2014, T‑543/12, Bugui va, EU:T:2014:911.

The factors to be evaluated when exercising this discretion are, first, that the material that has been produced late is, on the face of it, likely to be relevant to the outcome of the proceedings and, second, that the stage of the proceedings at which that late submission takes place, and the circumstances surrounding it, do not argue against these matters being taken into account (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 33). The acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36).

In the present case, the Opposition Division sees no reason why the observations submitted on 05/01/2015 could not have been filed in time. They constitute not just evidence additional to other evidence that was submitted within the time limit, but evidence raised for the first time after the deadline. The Opposition Division will not take these observations into account.

The judgments mentioned by the opponent have no impact on the above findings as they are not comparable to the present case: in T‑445/12, the Office did not deal with the request for proof of use at all, whereas, in the present case, the Office acknowledged receipt but rejected the request for proof of use on the ground that it was submitted late. In the case of T‑480/13, the document submitted late related to another document that was submitted on time, while in the present case the request for proof of use was raised for the first time after the time limit. In addition, T‑480/13 concerned the ownership of the earlier mark, whereas the present case concerns the request for proof of use.

Proof of use

According to Rule 22(1) EUTMIR, a request for proof of use pursuant to Article 42(2) or (3) EUTMR shall be admissible only if the applicant submits such a request within the period set by the Office for the applicant to file its observations in reply to the notice of opposition and to all the supporting facts, evidence and arguments submitted by the opponent.

The request for proof of use is contained in the belated observations of the applicant of 05/01/2015. Consequently, the applicant’s request for proof of use is not admissible pursuant to Rule 22(1) EUTMIR.

Entitlement to file the opposition

The ownership of the earlier mark is a matter to be examined ex officio by the Office. The Opposition Division notes that the opponent submitted with the notice of opposition a copy of the request for transfer filed at the Spanish Trade Mark Office. Subsequently, it submitted a copy of the acceptance of the transfer by the Spanish Trade Mark Office and a translation of the essential parts of said document. Therefore, the Opposition Division considers that the opponent proved its capacity to file and maintain the opposition.

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 12: Changeable covers for seats in cars.

After several limitations during the opposition proceedings the contested goods are the following:

Class 12: Motorised and non-motorised land vehicles, other than parts therefor and other than bicycles and parts and fittings for bicycles; Aircraft, namely free balloons, airships, aeroplanes, gliders and power gliders, rotorcraft, namely helicopters, gyrocopters, gyrodynes, hybrids of rotorcraft and fixed-wing aircraft, parachutes, vertical take-off aircraft with jet engines, human-powered aircraft, tilt-rotor and tilt-wing aircraft, STOL aircraft, hang-gliders and paragliders, ultralight aircraft (microlights), paramotors and motorised hang gliders, unmanned aircraft, and parts therefor; Machine-powered, wind-powered and muscle-powered water vehicles, And parts therefor; Space vehicles, namely space shuttles, spacecraft, space capsules, space stations, space probes, satellites, spacesuits, and parts therefor.

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 applicant’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 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 motorised land vehicles, other than parts therefor and except bicycles and parts and fittings for bicycles are different kinds of vehicles for locomotion by land that have a motor as an engine. Cars are, by definition, motorised land vehicles. It is common that accessories for land vehicles, such as the opponent’s changeable covers for seats in cars, are produced and/or sold by car manufacturers. These goods may be complementary and target the same public. Therefore, they are considered similar.

The contested non-motorised land vehicles, other than parts therefor and other than bicycles and parts and pieces for bicycles are different kinds of vehicles for locomotion by land that do not have a motor. Cars are land vehicles, but they do not fall under the group of non-motorised land vehicles, which comprises other means of transport, such as bicycles or tricycles, carts, cleaning trolleys, dining cars, kick sledges, sleighs, strollers, trolleys and wheelbarrows. Therefore, they have a different nature and purpose (locomotion on land without motor/protection of car seats) from the opponent’s changeable covers for seats in cars in Class 12. The applicant’s goods are produced by specialised undertakings, such as bicycle manufacturers. Moreover, they are neither complementary nor in competition, and do not have the same distribution channels, end users or usual origin. Therefore, these goods are dissimilar.

The contested aircraft, namely free balloons, airships, aeroplanes, gliders and power gliders, rotorcraft, namely helicopters, gyrocopters, gyrodynes, hybrids of rotorcraft and fixed-wing aircraft, parachutes, vertical take-off aircraft with jet engines, human-powered aircraft, tilt-rotor and tilt-wing aircraft, STOL aircraft, hang gliders and paragliders, ultralight aircraft (microlights), paramotors and motorised hang gliders, unmanned aircraft, and parts therefor; are different kinds of vehicles for locomotion by air and parts therefor. They have a different nature and purpose (locomotion by air/protection of car seats) from the opponent’s changeable covers for seats in cars in Class 12. The applicant’s goods are produced by specialised undertakings, such as aircraft manufacturers. Moreover, they are neither complementary nor in competition, and do not have the same distribution channels, end users or usual origin. Therefore, these goods are dissimilar.

The contested machine-powered, wind-powered and muscle-powered water vehicles, and parts therefor are different kinds of vehicles for locomotion by water and parts therefor. They have a different nature and purpose (locomotion by water/protection of car seats) from the opponent’s changeable covers for seats in cars in Class 12. The applicant’s goods are produced by specialised undertakings, such as shipbuilders and naval engineers. Moreover, they are neither complementary nor in competition, and do not have the same distribution channels, end users or usual origin. Therefore, these goods are dissimilar.

The contested space vehicles, namely space shuttles, spacecraft, space capsules, space stations, space probes, satellites, spacesuits, and parts therefor are vehicles for locomotion in space and parts therefor. They are very specialised goods that are expensive and target a very limited public. They have a different nature and purpose (locomotion in space/protection of car seats) from the opponent’s changeable covers for seats in cars in Class 12. Moreover, they are neither complementary nor in competition, and do not have the same distribution channels, end users or usual origin. Therefore, these goods are dissimilar.

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 the public at large. Due to their price, the degree of attention is low for the opponent’s goods and high for the applicant’s goods.

3. The signs

	VELOX
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 in which the word ‘Velox’ is depicted against a black square background. The latter is considered a less distinctive figurative element of a purely decorative nature. The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The contested sign is the word mark ‘VELOX’. As it is a word mark, it obviously has no element that could be considered more dominant. Furthermore, the protection of word marks covers different depictions in standard typefaces and use of upper and lower case letters. As the contested sign consists of a single word, it has no element that could be clearly considered more distinctive than others.

Visually, the signs coincide in the verbal element ‘VELOX’. The earlier mark is depicted in a rather standard typeface against a black square background.

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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually highly similar.

The signs are aurally identical as the figurative depiction of the earlier mark has no impact on its pronunciation.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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.

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.

5. Global assessment, other arguments and conclusion

The contested goods are partly similar and partly dissimilar to the opponent’s goods. The distinctiveness of the earlier right is considered normal.

The signs are aurally identical and visually highly similar. The differentiating elements are the figurative elements, namely the square background of the earlier sign, which is a less distinctive figurative element of a purely decorative nature, and the standard typeface and colours used in the earlier mark. Furthermore, consumers tend to focus on the verbal elements, which they are able to pronounce. Therefore, the coinciding elements outweigh the differences.

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 earlier Spanish trade mark No 423 695.

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.

For the sake of completeness, it must be mentioned that the opposition must fail insofar as based the ground of Article 8(1)(a) EUTMR because the signs are obviously not identical.

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 shall 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

Dorothée SCHLIEPHAKE

Julia SCHRADER

Swetlana BRAUN

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.