OPPOSITION No B 2 451 311

Aramis (société par actions simplifiée), 23 avenue Aristide Briand, 94 110 Arcueil, France (opponent), represented by Regimbeau, 20, rue de Chazelles, 75847 Paris Cédex 17, France (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 27/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 451 311 is partially upheld, namely for the following contested goods and services:

Class 12: Vehicles.

Class 35: Retailing and wholesaling of apparatus for locomotion by land, air or water, or in space, motor vehicle wheels, chassis parts for vehicles, transmission parts for vehicles, motor oils.

2. European Union trade mark application No 12 478 905 is rejected for all the above goods and services. It may proceed for the remaining contested goods in Class 12 (parts and fittings for vehicles) as well as for the non-contested services in Class 35.

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 12 478 905, namely against all the goods in Class 12 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 7 043 987. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (as in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 7 043 987.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 19/09/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 19/09/2009 to 18/09/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 12: Vehicles; apparatus for locomotion by land, air or water; automobiles; vans; trucks; vans (vehicles);vans (vehicles); motorcycles; motorcycles; vehicles for locomotion by land, air, water or rail; mopeds; two-wheeled land vehicles with or without engines; three-wheeled land vehicles with or without engines; four-wheeled land vehicles with or without engines; sailing and motor boats; aeroplanes.

Class 35: Advertising; business management; business administration; office functions; demonstration of goods; dissemination of advertisements; computerized file management; business advice and information to consumers; on-line advertising on a computer network; presentation of goods on all means of communication for retail sale; rental of on-line advertising insets; dissemination of information on line; retailing of vehicles; on-line retailing of vehicles; all the aforesaid services relating to the automobile sector.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 22/07/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 27/09/2015 to submit evidence of use of the earlier trade mark. On 28/09/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence consists of the following:

• Annex A: Extracts from the opponent’s website www.aramisauto.com, which show, inter alia, information about the number of second-hand vehicles sold, the number of recovered vehicles and turnover figures for 2014. The website also mentions that the company was created in 2001 and that it has 23 agencies all over France. A partial translation in English is included.

• Annex B: Article dated 13/09/2011 from www.lentreprise.lexpress.fr entitled ‘Rankings: the top 80 French retail websites’. The article shows, inter alia, ‘ARAMIS’, including the following figures in relation to it: turnover for 2010, growth figures for 2010/2009 and profitability for 2010. A partial translation in English is included.

• Annex C: Article dated 09/09/2010 from www.latribuneauto.com entitled ‘A new service for the recovery of a second-hand vehicle without purchasing obligation’. The article mentions that ‘the multi-channel and multi-brand new and second-hand vehicles AramisAuto.com starts a new service of Aramis for the recovery of a second-hand vehicle without purchasing obligation’. A partial translation in English is included.

• Annex D: Article dated 04/06/2013 from www.tfl.fr in relation to the new service of ‘AramisAuto’ for the recovery of a second-hand vehicle without purchasing obligation’.

• Annex E: Article dated 07/06/2013 from www.tfl.fr entitled ‘New Agencies for AramisAuto’ mentioning that the French company has already 20 agencies in France and has just opened a new agency in Grenoble. A partial translation in English is included.

• Annex F: Article dated 23/09/2013 from www.lentreprise.lexpress.fr entitled ‘E-commerce: the top 30 French retail websites’. The article shows, inter alia, ‘ARAMIS-AUTO’, including the turnover figures for 2012 and the turnover growth for 2011/2012. A partial translation in English is included.

• Annex G: Article from www.lejournaldesentreprises.com dated 07/03/2014 and a partial translation in English. The article is in relation to the expansion of the ‘ARAMIS’ agency in Puget-sur Argens (France) and mentions, inter alia, the number of cars sold in France in 2012 and refers to AramisAuto.com as a ‘leader of the multi-brand and multi-channel automobile distribution’.

• Annex H: Article from www.lesechos.fr dated 10/01/2013 and a partial translation in English. The article is entitled ‘Encouraged by record-breaking sales in France, Aramis Auto is now starting its expansion in Germany’. The article also mentions growth and revenue figures of AramisAuto for 2012.

• Annex I: Copy of an invoice in relation to the sale of a vehicle dated 01/06/2010 and a partial translation in English.

• Annexes J and K: Advertisements from French magazines in the sector of automobiles (‘AutoPlus’ and ‘Plus Loin’ magazine) dated in 2013, 2014 and 2015 showing, inter alia, advertisements for AramisAuto.com.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). In addition, it must be noted that the opponent actually provided partial translation of the relevant parts of the evidence and of nearly all items of the evidence. The several pieces of evidence that were not translated such as the advertisements are self-explanatory (because they contain pictures) and there is no need for a translation. Finally, the applicant does not seem to complain that it does not understand the evidence – it only states that the evidence is not translated and should be dismissed. Consequently, for the above reasons, the Opposition Division considers that there is no need to request any additional translation.

The applicant argues that not all the items of evidence show genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The press articles and the invoice show that the place of use is mostly France and to a small extent Germany. This can be inferred from the language of the documents, the currency mentioned and the addresses of the opponent’s agencies in France and Germany. Therefore, the evidence relates to the relevant territory.

With the exception of one advertisement dated in 2015, all of the evidence is dated within the relevant period. Therefore, there are sufficient indications in relation to the time of use.

The documents filed, namely the press articles and the figures mentioned therein, the advertisements and the invoice, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Therefore, there are sufficient indications in relation to the extent of the use of the earlier mark.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, there are few instances where the sign ‘Aramis’ appears alone. The evidence mostly shows use of the sign together with the verbal element ‘Auto’ and/or ‘.com’. However, it is considered that these additions are not substantial and do not alter the distinctive character of the mark. This is because the addition ‘auto’ is clearly descriptive in relation to the opponent’s activities in the automobile sector. The ‘.com’ is simply an indication of the top level domain name extension indicating the address where services can be obtained. Consequently, the Opposition Division concludes that nature of use of the earlier trade mark complies with the requirements of Article 15(1) EUTMR and the mark is used as registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for retailing of automobiles; on-line retailing of automobiles; all the aforesaid services relating to the automobile sector in Class 35. These services can be considered to form an objective subcategory of the broad category retailing of vehicles; on-line retailing of vehicles; all the aforesaid services relating to the automobile sector. This is because the term retailing of vehicles is very broad and includes the retail of diverse items such as bicycles, aircraft, trains, automobiles, etc. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for retailing of automobiles; on-line retailing of automobiles; all the aforesaid services relating to the automobile sector.

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

The Opposition Division notes that there is no proof of use in relation to any of the goods in Class 12. The opponent is indeed selling vehicles; however, none of these are designated by the trade mark ‘Aramis’. As regards some of the services in Class 35, for which the opponent claims to have proved genuine use (such as presentation of goods on all means of communication for retail sale; rental of on-line advertising insets; dissemination of information on line), it must be taken into account that the fact that the opponent advertises its own goods/services does not mean that it provides such services to third parties in order to make a profit and/or create an outlet for these services.

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 and services

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

Class 35: Retailing of automobiles; on-line retailing of automobiles; all the aforesaid services relating to the automobile sector.

The contested goods and services are the following:

Class 12: Vehicles and parts and fittings therefor.

Class 35: Retailing and wholesaling of apparatus for locomotion by land, air or water, or in space, motor vehicle wheels, chassis parts for vehicles, transmission parts for vehicles, motor oils.

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.

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.

Contested goods in Class 12

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested vehicles (that include, as a broader category, automobiles) are similar to a low degree to the opponent’s retailing of automobiles in Class 35.

However, the remaining contested goods, namely parts and fittings for vehicles are not similar to the opponent’s retailing of automobiles; on-line retailing of automobiles; all the aforesaid services relating to the automobile sector in Class 35. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.

Contested services in Class 35

The contested retailing of apparatus for locomotion by land include, as a broader category, the opponent’s retailing of automobiles. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested retailing of motor vehicle wheels, chassis parts for vehicles, transmission parts for vehicles, motor oils are considered similar to the opponent’s retail services related to automobiles. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they coincide in relevant public and distribution channels.

Likewise, the contested wholesaling of apparatus for locomotion by land; wholesaling of motor vehicle wheels, chassis parts for vehicles, transmission parts for vehicles, motor oils are similar to the opponent’s retail services related to automobiles. The goods that these services relate to are identical or closely related. Wholesaling is selling goods to other undertakings (retailers) which then sell the goods to end consumers. Even though the relevant public and distribution channels are different, these services have the same nature and purpose and they are in a way complementary to each other. Moreover, wholesalers sometimes also provide retail services and thus, the commercial origin of these services can be the same.

The contested retailing and wholesaling of apparatus for locomotion by air or water, or in space are also similar to the opponent’s retail services related to automobiles. This is because these sets of services have the same nature, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

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 and services found to be identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. Taking into consideration the nature of some of the relevant goods and services (such as automobiles and their retail) and taking into account their price, 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 car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige. See in this respect the GC judgments of 22/03/2011, T-486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 39-42. However, in relation to the retail of goods such as motor oils, the degree of attention is likely to be mostly average. Therefore, it is considered that the degree of attention displayed by the relevant public ranges from average to high.

3. The signs

ARAMIS	ARTEMIS
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 marks are word marks consisting of one verbal element each, ‘ARAMIS’ and ‘ARTEMIS’, respectively. None of these elements has any descriptive/weak meaning in relation to the relevant goods and services and their inherent distinctiveness is normal. The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘AR-MIS’, which represents the first two and the last three letters in both signs. The signs differ in the middle, namely in the third letter ‘A’ of the earlier mark and in the third and fourth letters ‘TE’ of the contested sign.

Taking into account that the signs have the same beginnings, endings and have nearly the same length, it is considered that they are visually similar to a higher than average degree.

Aurally, for the majority of the relevant territory (for example, the Spanish-, German-, Latvian-, Romanian, Bulgarian and Estonian-speaking part of the relevant public) the pronunciation of the signs coincides in the sound of the letters ‛AR‑MIS’, present identically in both signs and differs in the sound of the differing third letter ‘A’ of the earlier mark and in the sound of the letters ‘TE’ of the contested sign. In some languages, such as French, the sound of the last letter ‘S’ is silent and in other languages, such as English, there are additional differences in the pronunciation due to the different sounds of some of the vowels and the different sound of the last letter ‘S’ (pronounced as ‘Z’ in the earlier mark as opposed to ‘S’ in the contested sign). Consequently, in view of the above, it is considered that the signs are aurally similar to at least an average degree (as regards for example, the Spanish-, German-, Latvian- Bulgarian-, Estonian-, Romanian- and French-speaking part of the relevant public) and similar to a lower than average degree as regards, for example, the English-speaking public.

Conceptually, part of the public (such as the French- and English-speaking part of the public) will understand the word ‘ARTEMIS’ of the contested sign as ‘the Greek goddess of the hunt’. However, the contested sign has no meaning in other languages, such as Spanish, Latvian, Bulgarian and Estonian. As regards the earlier mark, part of the public will recognise the word ‘ARAMIS’ as a male first name and, in particular, as the name of the fictional character Aramis from the novel The Three Musketeers by Alexandre Dumas. However, another part of the public will not associate the word ‘ARAMIS’ with any particular meaning.

Consequently, as regards the part of the public, which will associate the signs with a dissimilar meaning, the signs are not conceptually similar. Likewise, the signs are not conceptually similar for the relevant public that will associate with a meaning only one of the signs. Lastly, for that part of the public, for which neither of the signs has a meaning, a conceptual comparison is not possible and 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 services 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 and services are partly identical and similar to various degrees and partly dissimilar to the opponent’s services and they are directed both at the public at large and at specialised consumers. Depending on the sophistication and cost of the particular relevant goods and services, the degree of attention of the relevant public may vary from average to high.

The earlier trade mark and the contested sign are visually similar to a higher than average degree. They are aurally similar to at least an average degree (as regards for example, the Spanish-, German-, Latvian-, Bulgarian-, Estonian-, Romanian- and French-speaking part of the relevant public). The signs are not conceptually similar for a part of the public, but in relation to another part of the public, the conceptual aspect does not influence the assessment of the similarity of the signs.

While it is true that the signs differ in certain aspects, the coincidences in the marks prevail and are focused in their beginnings and endings. Furthermore, 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).

In view of the foregoing and taking into account all the relevant circumstances of the case, the Opposition Division concludes that the signs are sufficiently similar to induce a likelihood of confusion on at least part of the relevant public, especially the part of the public, for which the signs are conceptually neutral, even if displaying a higher level of attention.

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 7 043 987. It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees 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.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Liliya YORDANOVA

Liliya YORDANOVA

Michaela SIMANDLOVA

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.