OPPOSITION No B 2 529 843

Amm GmbH & Co. KG, Hamburger Str. 99, 90451 Nürnberg, Germany (opponent), represented by Hafner & Partner, Schleiermacherstr. 25, 90491 Nürnberg, Germany (professional representative)

a g a i n s t

AMTrans Andrzej Mróz, Zaolziańska 17/1, 53-334 Wrocław, Poland (applicant)

On 29/03/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 529 843 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the services of European trade mark application No 13 805 511, namely against all the services in Class 39. The opposition is based on European Union trade mark registration No 10 197 192. 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.

1. The signs

Earlier 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 figurative mark composed of the letters 'amm' written in bold slightly stylised lowercase typeface. The contested mark is a figurative mark composed of an abstract element, namely an interrupted circle which, at most, may be seen as a highly stylised letter 'a' which finishes with a curved line on the right side and is followed by two identical curved lines. The contested mark also consists of the word 'TRANS' written in title case orange letters.

Visually, the public that will perceive the first element in the contested mark as an abstract element, the signs are visually dissimilar. For the other part of the public that may perceive the mentioned element of the contested mark as a stylised letter 'a', the signs are visually similar to the extent that they share the letter ‘a’. However, the way the letter is depicted within the signs is very different. The letter 'a' of the earlier mark is written in a lowercase italic 'Century Gothic' font type, while the letter 'a' (if perceived as such) of the contested sign is written in lowercase 'Bauhaus 93' font type, namely as 'a'. The marks also differ in the additional word 'TRANS', the colours and in the two curved lines placed behind the letter 'a' (if perceived as such) of the contested mark. As the signs overlap in their irrelevant aspects, the signs are not visually similar.

Aurally, irrespective of different pronunciation rules in different parts of the relevant territory, for a part of the public that will perceive the abstract element of the contested mark as a letter 'a', the signs are aurally similar to the extent that they share the sound ‘a’. The signs overlap in their irrelevant aspects, therefore it is concluded that they are not aurally similar. The same conclusion is valid for the other part of the public, which will not perceive the letter 'a' in the contested mark. As the signs do not aurally coincide in any element, it is concluded that the signs are not aurally similar.

Conceptually, the earlier mark has no meaning. The public in the relevant territory will perceive the word 'TRANS' of the contested sign as a prefix meaning ‘across, beyond, crossing on the other side’ or as ‘indicating that a chemical compound has a molecular structure in which two groups or atoms are on opposite of a double bond’ (see Collins English Dictionary, online version). The relevant public will understand this word since it used as such in the official languages in the relevant territory. In some of the relevant languages, for example Polish or Slovenian, the relevant public will also perceive the word 'TRANS' as 'a hypnotic state resembling sleep'). Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

The signs are dissimilar overall.

The opponent argues that the word ‘TRANS’ is a common abbreviation for transportation and is considered to be a weak element of the contested mark. Therefore this term can be neglected and the term ‘amm’ is the formative part of the contested mark. The Opposition Division considers that the meaning and the eventual weakness of the element ‘TRANS’ is irrelevant in the present case, as the signs were found to be dissimilar overall. Therefore, this argument of the opponent must be set aside.

2. Conclusion

Article 8(1)(b) EUTMR states that ‘the trade mark applied for shall not be registered: if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’ (emphasis added).

Therefore, according to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Justyna GBYL

Janja FELC

Richard BIANCHI

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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.