OPPOSITION No B 2 595 232

Volvo Trademark Holding AB, 405 08, Göteborg, Sweden (opponent), represented by Noerr Alicante IP, S.L., Avenida México 20, 03008, Alicante, Spain (professional representative)

a g a i n s t

Shenzhen Folvo Trading Co., Ltd., Building 20, West Zone, Xiangxicun, Nanhu Road, Luohu District, Shenzhen, People’s Republic of China (applicant), represented by Agency Arnopatents, Brivibas street 162/2-17, 1012, Riga, Latvia (professional representative).

On 21/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 595 232 is upheld for all the contested goods.

2. European Union trade mark application No 14 365 704 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 14 365 704 . The opposition is based on, inter alia, European Union trade mark registration No 2 361 087 ‘VOLVO’ (word mark). The opponent invoked Article 8(1)(b) and Article 8(5) 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 2 361 087 ‘VOLVO’, as it is the most similar to the contested trade mark.

1. The goods

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of data, sound or images and data processing equipment and computers, including radio apparatus, video screens, tape players, loudspeakers, amplifiers, telecommunication equipment, car telephone installations, compact disc players, telematic terminals, distress signal terminals, navigation and radar terminals, traffic control systems, transport supervision system, locating devices, toll terminals for electronic toll detection in traffic, black box (accident data monitoring and recording device), auto-computers and on-board computers, calculators and pocket calculators; automatic alarm units, anti-theft warning devices, electronic anti-theft devices, including vehicle immobilizing units.

Class 25: Clothing (also outer clothing, leisure wear and sportswear), including belts, jackets, coats, pullovers, shawl, shirts, waistcoats, socks, scarves, ties, sweaters, t-shirts, overalls, coveralls, waterproof clothing, rain wear, trousers, sleep wear; headgear, including caps, hats; footwear, including casual shoes.

The contested trade mark has been partially refused in parallel proceedings. The remaining contested goods are the following:

Class 9: Computer peripheral devices; Tablet computers; Intercommunication apparatus; Navigational instruments; Audio- and video-receivers; Cabinets for loudspeakers; Acoustic [sound] alarms; Camcorders; Remote control apparatus; Radios.

Class 25: Clothing; Shoes; Hats; Shawls; Neckties; Hosiery; Scarfs; Gloves [clothing]; Wedding dresses; Girdles.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The terms ‘also’ and ‘including’, used in the opponent’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (on the use of ‘in particular’, which has the same function as ‘including’, see a reference in 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 9

The contested computer peripheral devices; tablet computers; intercommunication apparatus; navigational instruments; audio- and video-receivers; camcorders; remote control apparatus; radios are all types of data processing apparatus and equipment and are included in (or at least overlap with) the opponent’s broad category of apparatus for recording, transmission or reproduction of data, sound or images and data processing equipment and computers, including radio apparatus, video screens, tape players, loudspeakers, amplifiers, telecommunication equipment, car telephone installations, compact disc players, telematic terminals, distress signal terminals, navigation and radar terminals, traffic control systems, transport supervision system, locating devices, toll terminals for electronic toll detection in traffic, black box (accident data monitoring and recording device), auto-computers and on-board computers, calculators and pocket calculators. Therefore, they are identical.

The contested cabinets for loudspeakers are similar to the opponent’s apparatus for reproduction of sound <…>, including <…> loudspeakers <…>. These goods are complementary, have the same general purpose, are sold through the same distribution channels to the same relevant public and originate from the same companies.

The contested acoustic [sound] alarms are at least highly similar to the opponent’s automatic alarm units, as these goods have the same purpose, distribution channels, relevant public and producers.

Contested goods in Class 25

Given the explanation above of the words ‘also’ and ‘including’, the contested clothing is considered identically included in both lists.

The contested shoes and hats are included in the broad categories of the opponent’s footwear, including casual shoes and headgear, including caps, hats, respectively, and are therefore identical.

The contested shawls; neckties; hosiery; scarfs; gloves [clothing]; wedding dresses; girdles are included in the opponent’s clothing. Therefore, 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 found to be identical or similar are directed at the public at large.

The degree of attention is average for the goods in Class 25, while, in relation to the goods in Class 9, it may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

VOLVO
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 pronunciation of the letter ‘V’ varies in the EU depending on the language of the relevant public. In particular, German speakers may pronounce the letter ‘V’ in the same way as ‘F’, while Spanish speakers may pronounce it in the same way as ‘B’. The Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public (e.g. the public in Germany and Austria), for which the pronunciation of the signs is more similar, thus affecting the assessment of the likelihood of confusion.

The words ‘VOLVO’ and ‘FOLVO’ of the earlier mark and contested sign, respectively, have no meaning in German and are, therefore, distinctive.

The figurative element of the contested trade mark is rather abstract, although it resembles a flower or pinwheel. There is no obvious connection between this element and the relevant goods, and therefore the element is distinctive. Furthermore, neither the verbal nor the figurative element is dominant in the sign. Nevertheless, 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).

Visually, the signs coincide in the number of letters (five) of their word elements of both signs, four letters of which are identical, namely ‘*OLVO’. However, they differ in their first letters, ‘V’ in the earlier mark and ‘F’ in the contested sign, as well as in the additional figurative element of the contested sign. It is noted that the typeface of the word element of the contested mark is standard. While the figurative element of the contested sign plays a less important role for the reasons explained above, the differing first letters of the verbal elements affects the impressions created by the marks in a way that, overall, they are visually similar to an average degree.

Aurally, a part of the public will pronounce the signs identically as, according to German pronunciation rules, the sounds of the letters ‘V’ and ‘F’ can be identical. Even if the letters ‘V’ and ‘F’ are not pronounced identically, they will sound rather similar.

Therefore, the signs are aurally identical or at least highly similar.

Conceptually, only the figurative element could be perceived as meaningful. As the word elements of both signs have no meaning and the figurative element is present only in the contested sign, the signs are not conceptually similar.

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. 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

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.

In the present case, the goods are identical or similar (including to a high degree), while the signs are visually similar to an average degree, aurally identical or highly similar and conceptually not similar. The degree of attention is average for some of the goods, and for others it will vary from average to higher than average. The distinctiveness of the earlier mark is average.

The Opposition Division considers that the degrees of similarity between the signs on the visual and aural levels are sufficient to lead the relevant public to believe that the goods originate from the same company or related companies. The signs’ differing first letters, especially considering their highly similar or even identical pronunciation in German, are insufficient to safely exclude the likelihood of confusion. Nor does the figurative element of the contested sign (in itself or together with the differing first letters) result in a significantly different overall impression.

Account must be 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The Opposition Division has also considered the fact that, with regard to the goods in Class 25, the visual perception of the marks in question will generally take place prior to purchase and the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 ‑ T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). The degree of attention in relation to the goods in Class 25 is average and the degree of visual similarity is sufficiently high for the relevant public to associate or directly confuse the marks. This is especially true considering the aural proximity (or identity) between the differing letters ‘V’ and ‘F’ of the verbal elements of the marks.

Considering all the above, there is a likelihood of confusion on the part of the German-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 2 361 087 ‘VOLVO’. It follows that the contested trade mark must be rejected for all the contested goods.

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 extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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.

The Opposition Division

Vít MAHELKA

Vita VORONECKAITE

Cindy BAREL

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.