OPPOSITION No B 2 446 600

Audi AG, Auto-Union-Str. 1, 85045 Ingolstadt, Germany (opponent), represented by Annette Krah, Audi AG, Patentabteilung I/EZ-1, 85045 Ingolstadt, Germany (professional representative)

a g a i n s t

Beausoleil (Société par Actions Simplifiée), 55 avenue Victor Hugo, 75116 Paris, France (applicant), represented by Cabinet Degret, 24, place du Général Catroux, 75017 Paris, France (professional representative).

On 26/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 446 600 is upheld for all the contested goods and services.

2. Community trade mark application No 13 233 416 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 233 416. The opposition is based on, inter alia, Community trade mark registration No 9 930 751. The opponent invoked Article 8(1)(b) and 8(5) CTMR with regard to this earlier right.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate first to examine the opposition in relation to the opponent’s Community trade mark registration No 9 930 751.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Fire-extinguishing apparatus.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials.

Class 44: Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, horticulture and forestry services.

After a limitation of the scope of protection of the contested trade mark, submitted by the applicant on 22/12/2014, the contested goods and services are the following:

Class 9: Dungarees, costumes, gloves or diving masks; Clothing for protection against accidents, irradiation and fire; Protection devices for personal use against accidents; Spectacles (optics); 3D spectacles; Opticians’ goods; Glasses cases.

Class 10: Medical apparatus and instruments; Apparatus for the treatment of deafness; Hearing aids; Diagnostic apparatus for medical purposes; Prosthetics and artificial implants; Cases fitted for medical instruments; Hearing protection devices.

Class 44: Medical services; Medical services; Medical assistance; Plastic surgery; Advisory services relating to health, In particular relating to ear health; Consultancy in the treatment of deafness and equipment for the hard of hearing; Medical equipment rental; Opticians’ services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The earlier Community trade mark is registered for the entire class heading of Classes 9, 10 and 44 of the Nice Classification. It was filed on 29/04/2011. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards Community trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the ninth edition.

The term ‘in particular’, used in the applicant’s list of services in Class 44, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Contested goods in Class 9

The contested dungarees, costumes, gloves or diving masks; clothing for protection against accidents, irradiation and fire; protection devices for personal use against accidents are included in the broad category of the opponent’s life-saving apparatus and instruments. They are identical.

The contested spectacles (optics); 3D spectacles; opticians’ goods are included in the broad category of the opponent’s optical apparatus and instruments. They are identical.

The contested glasses cases are synonymous with the opponent’s spectacle cases, which are covered by the alphabetical list of Class 9 of the ninth edition of the Nice Classification. Therefore, they are identical.

Contested goods in Class 10

Medical apparatus and instruments are identically contained in both lists of goods.

The contested apparatus for the treatment of deafness; hearing aids; diagnostic apparatus for medical purposes; prosthetics and artificial implants are included in the broad category of the opponent’s medical apparatus and instruments. They are identical.

The contested cases fitted for medical instruments are included in the alphabetical list of Class 10 of the ninth edition of the Nice Classification covered by the earlier mark. They are identical.

The contested hearing protection devices are synonymous with the opponent’s hearing protectors, which are covered by the alphabetical list of Class 10 of the ninth edition of the Nice Classification. Therefore, they are identical.

Contested services in Class 44

Medical services (listed twice in the list of applicant’s services) are identically contained in both lists of services.

The contested medical assistance; plastic surgery; advisory services relating to health, in particular relating to ear health; consultancy in the treatment of deafness and equipment for the hard of hearing; medical equipment rental; opticians’ services are included in the broad category of the opponent’s medical services. They are identical.

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 are directed at both the public at large and business customers with specific professional knowledge or expertise. Depending on the particular goods and services, the degree of attention will vary from average to higher than average.

3. The signs

Audi
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 bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark, ‘AUDI’.

The contested sign is a figurative mark composed of the word ‘AUDIVUE’, of which the string of letters ‘AUDI’ is depicted in grey whereas the string of letters ‘VUE’ is depicted in black. The letters ‘A’ and ‘V’ are written in stylised upper case characters, and the other letters are fairly standard.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

The element ‘AUDI’ that the marks have in common may be associated, by part of the public, with the concept of ‘audio’. Bearing in mind that some of the relevant goods and services, such as protection devices for personal use against accidents that encompass protective devices for ears in Class 9 and advisory services relating to health, in particular relating to ear health; consultancy in the treatment of deafness and equipment for the hard of hearing in Class 44, are related to ear protection or ear health, this element is weak for these goods and services. This part of the public will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, for this part of the public, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue. However, it has a normal degree of distinctiveness for the part of the public that will not associate it with any meaning.

The element ‘VUE’ of the contested sign will be understood by the French-speaking part of the public as meaning ‘view’. Bearing in mind that some of the relevant goods and services, such as spectacles (optics); 3d spectacles; opticians’ goods in Class 9 and opticians’ services in Class 44, are related to eyesight, this element is weak for these goods and services. This part of the public will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, for this part of the public, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue. It has a normal degree of distinctiveness for the part of the public to which it does not convey any meaning.

The marks under comparison have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the element ‘AUDI’, which is of normal distinctiveness for part of the public. However, they differ in the additional element ‘VUE’, the colours and the stylisation of the letters in the contested sign.

The coinciding element, namely ‘AUDI’, is located at the beginning of the contested sign. Consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the fact that the coinciding element, ‘AUDI’, is placed at the beginning of the contested sign has to be taken into account when assessing the likelihood of confusion between the marks.

Taking into account the facts that the elements ‘AUDI’ and ‘VUE’ are separated by being depicted in different colours (grey and black), and that the element ‘VUE’ starts with an upper case letter in the contested sign, consumers will easily notice the element ‘AUDI’ in both signs.

Therefore, the signs are visually similar to an average degree.

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 element /AUDI/, present in both signs. The pronunciation differs in the sound of the element /VUE/ of the contested mark, which has no counterpart in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, only part of the public will associate the word ‘AUDI’ with the concept mentioned above. Likewise, the element ‘VUE’ in the contested sign will be understood by only part of the public (i.e. the French-speaking public). However, due to the weak distinctiveness of these words in relation to some of the goods and services, they will have a low impact on the assessment of likelihood of confusion. Consequently, for the part of the public that will associate the words ‘AUDI’ and/or ‘VUE’ with any meanings, the conceptual similarity will not be particularly relevant to these goods and services.

On the other hand, for part of the public, neither of the signs will convey any meaning. Therefore, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than normal for some of the goods and services, such as protection devices for personal use against accidents that encompass protective devices for ears in Class 9 and advisory services relating to health, in particular relating to ear health; consultancy in the treatment of deafness and equipment for the hard of hearing in Class 44, and for the part of the relevant territory in which the word ‘AUDI’ will be associated with the concept mentioned in section c) of this decision.

The mark has a normal degree of distinctiveness for the remaining relevant goods and services in relation to which it has no meaning from the perspective of the public in the relevant territory. Finally, the mark has a normal degree of distinctiveness for the remaining part of the relevant territory, where it has no meaning in relation with the goods and services in question.

5. Global assessment, other arguments and conclusion

The goods and services are identical.

The signs are similar because the entire earlier mark, ‘AUDI’, is reproduced at the beginning of the contested sign.

The coinciding element, ‘AUDI’, is weak in relation to some of the goods and services for part of the relevant public; however, it is of normal distinctiveness for the remaining part of the public, because it will convey no meaning with regard to any of the goods and services in question from the perspective of that part of the public in the relevant territory.

For the part of the public that will not associate the earlier mark with any concept, a conceptual comparison is not possible, and, therefore, the visual and aural similarities will be sufficient to outweigh the differences between the signs and to find a likelihood of confusion for this part of the public.

The concept of likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that the identical or similar goods come from the same undertaking or at least economically linked undertakings. In the present case, it is likely that the contested sign will be associated by part of the public with the earlier mark, since the relevant public may perceive the contested sign, ‘AUDIVUE’, as a new sub-brand or variation of the earlier mark, ‘AUDI’, designating a new line of goods.

Finally, the Opposition Division must take into account the interdependence principle between the relevant facts, that is, that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services. In the case in question, the goods and services are identical. Therefore, the lesser degree of similarity between the signs is offset by the identity of the goods and services.

In view of the foregoing and all of the relevant circumstances of the case, particularly the facts that the earlier mark, ‘AUDI’, is entirely reproduced at the beginning of the contested sign and that the contested sign is depicted in a way that makes it easy to notice this initial element, the Opposition Division considers that, even if there is a high degree of attention, at least part of the relevant public is likely to think that the identical goods and services in question come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 9 930 751. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier Community trade mark registration No 9 930 751 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) CTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) CTMR.

The applicant refers to previous decisions of the Office to support its arguments. 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 CTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. The signs and circumstances of these cases are not comparable to those of the present case because of various factors.

Although the signs under comparison in the cases referred to by the applicant have the same beginnings, other factors were also taken into consideration, such as the different overall impressions created by the signs (13/06/2013, B 2 080 672) and the low degree of distinctiveness of the coinciding elements (02/02/2012, R1829/2010-4, LIMO/LIMOMIX). However, this is not the case in the present proceedings. In the present case, the elements ‘AUDI’ and ‘VUE’ are depicted in different colours (grey and black, respectively) and the element ‘VUE’ starts with an upper case letter. Consequently, it is likely that the public will easily notice the element ‘AUDI’ in the contested sign and, therefore, make an association between the marks. Moreover, for part of the public, the differing element ‘VUE’ will have a limited impact in relation to some of the goods and services. For this part of the public, the similarities will be even more apparent.

The request of proof of use submitted by the applicant was found to be inadmissible, as earlier Community trade mark registration No 9 930 751 had been registered for less than five years at the date of publication of the contested mark.

The applicant argues that the opponent acted in bad faith when filing its earlier Community trade mark registration No 9 930 751 and requests the cancellation of this earlier mark. The Opposition Division considers that this is not the subject matter of this procedure and could only be taken into account in a cancellation procedure.

The applicant also requests the cancellation of other earlier rights, which were not used as a basis for the opposition by the opponent, on the ground of non-use. However, this is irrelevant in the context of an opposition to a Community trade mark. The aim of opposition proceedings is merely to determine whether or not there is a conflict between an earlier mark and a contested CTM application, but not to assess whether or not the applicant could challenge the validity of the earlier rights. Furthermore, this request could only be taken into account in a cancellation procedure.

COSTS

According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Natascha GALPERIN

Hasan Oguzhan KARSLI

Solveiga BIEZA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.