OPPOSITION No B 2 380 759

Fleet (Line Markers) Limited, Spring Lane South, Spring Lane Industrial Estate, WR14 1AJ, Malvern, United Kingdom (opponent), represented by Jeremy Nicholls, Fleet (Line Markers) Limited, Spring Lane South, WR14 1AJ, Malvern, United Kingdom (employee representative)

a g a i n s t

Oy Sisu Auto Ab, Tammisaarentie 45, 10300 Karjaa, Finland (applicant), represented by Kolster Oy Ab, Salmisaarenaukio 1, 00180 Helsinki, Finland (professional representative).

On 30/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 380 759 is upheld for all the contested goods, namely

Class 12: Trucks.

2. European Union trade mark application No 12 757 019 is rejected for all the contested goods. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 757 019 (figurative), namely against all the goods in Class 12. The opposition is based on European Union trade mark registration No 8 405 508 ‘ROK’ (word). 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.

a) The goods

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

Class 12: All-terrain land vehicles.

After a limitation filed by the applicant on 21/12/2017 (further amended on 13/02/2018) the contested goods are the following:

Class 12: Trucks.

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.

The Opposition Division notes that the opponent’s all-terrain land vehicles is a category that encompasses all kind of land vehicles that are designed to cope with difficult terrains. While it is correct, as the applicant notes, that such vehicles may be intended for recreational and entertainment purposes, it also holds true that such vehicles are also used for utility purposes for example in the agricultural and forestry sector. Trucks indisputable are also used for such purposes in these sectors.

In the light of the above, the contested trucks are similar to the opponent’s all-terrain land vehicles since they may have the same purpose and nature and they might also coincide in producer. Furthermore, they may target the same end-users via identical distribution channels.

b) 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 business customers with specific professional knowledge or expertise.

The degree of attention is considered to be high. Taking into consideration the price of the relevant goods, 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 them, 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 (by analogy: 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).

c) The signs

ROK ROK ROK
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).

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.

The verbal element in the contested sign ‘ROCK’ will be perceived by the English speaking consumers as ‘a large mass of stone forming a cliff, promontory, or peak’ or rather to a ‘kind of popular music’ (https://www.merriam-webster.com/dictionary/rock). In addition, at least a substantial part of the English speaking consumers would perceive the earlier mark element ‘ROK’ as a misspelling or a variation of the word ‘ROCK’, thus conveying the same meanings outlined above. This is especially the case because both words are pronounced identically and also because playing with the spelling of a word is common practice in trade and consumers are acquainted with it. It is common for words in advertisements to be written not as they should be, but in a modified form, and also shortened (7/06/2017, T-258/16, GINRAW, EU:T:2017:375, § 65 and the case-law cited).

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, since as said above, the signs verbal elements convey the same concept at least in a substantial part of it.

It is considered that the graphical elements of the contested sign are decorative and as such would have very limited impact in the sign’s perception. Thus, while the distinctiveness of the elements of the signs is, as a rule, relevant for their comparison, in this particular case irrespective of the meaning that the consumers will see in ‘RO(C)K’ and whether such meaning may be in some way related to the goods at issue, is irrelevant. This is because, as noted above, at least a substantial part of the public will perceive the single verbal elements in both signs as evoking identical concepts.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘RO*K’. In this regard, it must be stressed that the Court held that what matters in the assessment of the visual similarity of two marks is the presence, in each of them, of several letters in the same order (judgment of 04/03/2010, C 193/09 P, ECLI:EU:C:2010:121, §27). However they differ in the third letter ‘C’ and the graphical elements of the contested sign. The stylization of the letters of the contested sign is not particularly striking and will be perceived as an ordinary graphical means of bringing the verbal elements to the attention of the public. This stylisation and the two horizontal lines in it are not sufficient to obscure or camouflage the common letters in the marks.

Therefore, the signs are similar to an average degree.

Aurally, the signs will be identically pronounced as [ROK].

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. In specific, the earlier mark ‘ROK’ will be perceived as a misspelling of the contested application ‘ROCK’ at least by a substantial part of the relevant public. Therefore, as both signs will be perceived with the same meanings outlined above by the said public, they are conceptually identical for it.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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, for the public that sees in the earlier mark the concept of a ‘stone’, its distinctiveness will be reduced to the extent that such concept might be seen as alluding to characteristics of the goods (e.g. to carry stones or other heavy objects). For the rest, it will have a normal degree of distinctiveness.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, 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. 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case the goods have been found similar. They target the professional public which will pay a high degree of attention.

The signs have been found visually similar to an average degree, aurally identical and conceptually identical for a substantial part of the relevant public. The earlier mark has a normal degree of distinctiveness for part of the public and reduced distinctiveness for another.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed visual average degree of similarities and aural and conceptual identity between them. Consequently, at least a significant part of the relevant public, when encountering the signs in relation to similar goods, are likely to think that they come from the same undertaking or from economically linked undertakings, notwithstanding the high degree of attention paid in relation to them.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 8 405 508. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 120 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Article 18(1)(c) EUTMIR (former Rule 94(7)(d) EUTMIR, in force before 01/10/2017).

The Opposition Division

Aldo BLASI

Matthias KLOPFER

Teodora Valentinova TSENOVA PETROVA

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.