OPPOSITION Nо B 2 603 952

 

Paragon GmbH & Co. KgaA, Artegastraße 1, 33129 Delbrück, Germany (opponent), represented by Spalthoff und Lelgemann, Huyssenallee 70/72, 45128 Essen, Germany (professional representative)

a g a i n s t

Paragan, Lipnická 351, 75361 Hranice Iv, Czech Republic (applicant), represented by Jaroslav Zuska, Plzenska 261, 15500 Praha, Czech Republic (professional representative).

On 18/05/2021, the Opposition Division takes the following

DECISION:

 

1.	Opposition No B 2 603 952 is upheld for all the contested goods, namely:

 

	Class 12: Aerofoils for land vehicles; automobiles and structural parts therefor; carriage body parts; car body modification parts for sale in kit form; vehicle cabs; hoods for vehicles; coachwork for motor vehicles; automobile bodies; hood shields as structural parts of vehicles; tonneau covers; bumpers for automobiles; panels for vehicle bodies [shaped]; hardtops [roofs] for vehicles; wheel arch extensions; folding hoods for vehicles; tonneaus; spoilers for automotive vehicles; spoilers for vehicles; carriage roofs; skylights for vehicles; roof cases for vehicles; roof rack storage containers for land vehicles; pickup truck caps; aero-dynamic fairings for vehicles; aerodynamic attachments for vehicle bodies; side shields as structural parts of vehicles; upholstery for vehicles; bodywork parts for vehicles; components for the outer bodies of vehicles; interior panels for vehicles; interior pouches for vehicles; vehicle body hardware; sleeping berths for vehicles; vehicle bumpers; linings for vehicles; protective interiors for vehicles; protecting covers [shaped] for vehicles; protective strips for vehicle bodies; protective linings for upholstered recesses within vehicles; monocoque structures for vehicles; air flow spoilers; air flow spoilers for vehicles; interlocking panels for vehicle bodies; roof linings for vehicles; cargo trailers; trailers [vehicles]; trailer tents; motor homes.
2.		European Union trade mark application No 14 676 522 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

 

On 04/11/2015, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 676 522 (figurative mark), namely against all goods in Class 12. The opposition is based on EUTM registration No 3 705 051, ‘Paragon’ (word mark). 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: Motor vehicles, in particular for locomotion by land, parts and spare parts therefor.

The contested goods are the following:

Class 12: Aerofoils for land vehicles; automobiles and structural parts therefor; carriage body parts; car body modification parts for sale in kit form; vehicle cabs; hoods for vehicles; coachwork for motor vehicles; automobile bodies; hood shields as structural parts of vehicles; tonneau covers; bumpers for automobiles; panels for vehicle bodies [shaped]; hardtops [roofs] for vehicles; wheel arch extensions; folding hoods for vehicles; tonneaus; spoilers for automotive vehicles; spoilers for vehicles; carriage roofs; skylights for vehicles; roof cases for vehicles; roof rack storage containers for land vehicles; pickup truck caps; aero-dynamic fairings for vehicles; aerodynamic attachments for vehicle bodies; side shields as structural parts of vehicles; upholstery for vehicles; bodywork parts for vehicles; components for the outer bodies of vehicles; interior panels for vehicles; interior pouches for vehicles; vehicle body hardware; sleeping berths for vehicles; vehicle bumpers; linings for vehicles; protective interiors for vehicles; protecting covers [shaped] for vehicles; protective strips for vehicle bodies; protective linings for upholstered recesses within vehicles; monocoque structures for vehicles; air flow spoilers; air flow spoilers for vehicles; interlocking panels for vehicle bodies; roof linings for vehicles; cargo trailers; trailers [vehicles]; trailer tents; motor homes.

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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 (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.

In its submissions the applicant argues that the parties operate in different segments of the vehicles market. However, it has to be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination, in contrast to trade mark infringement cases, in which the particular facts and the specific nature of use of the marks are crucial. In other words, in the present case the Office must take into account those circumstances in which it is usual to expect the type of goods covered by the marks to be marketed. Therefore, the particular circumstances in which the goods concerned are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (see in this regard the judgment of 15/03/2007, C-171/06 P, ‘Quantum’, paragraph 59). Therefore, this argument of the applicant has to be put aside.

The contested automobiles; trailers [vehicles]; cargo trailers; motor homes are different types of vehicles. Therefore, they are included in the opponent’s broader category of motor vehicles, in particular for locomotion by land. They are identical.

The remaining contested goods, aerofoils for land vehicles; structural parts therefor [automobiles]; carriage body parts; car body modification parts for sale in kit form; vehicle cabs; hoods for vehicles; coachwork for motor vehicles; automobile bodies; hood shields as structural parts of vehicles; tonneau covers; bumpers for automobiles; panels for vehicle bodies [shaped]; hardtops [roofs] for vehicles; wheel arch extensions; folding hoods for vehicles; tonneaus; spoilers for automotive vehicles; spoilers for vehicles; carriage roofs; skylights for vehicles; pickup truck caps; aero-dynamic fairings for vehicles; aerodynamic attachments for vehicle bodies; side shields as structural parts of vehicles; upholstery for vehicles; bodywork parts for vehicles; components for the outer bodies of vehicles; interior panels for vehicles; interior pouches for vehicles; vehicle body hardware; sleeping berths for vehicles; vehicle bumpers; linings for vehicles; protective interiors for vehicles; protecting covers [shaped] for vehicles; protective strips for vehicle bodies; protective linings for upholstered recesses within vehicles; monocoque structures for vehicles; air flow spoilers; air flow spoilers for vehicles; interlocking panels for vehicle bodies; roof linings for vehicles; are all parts and fittings for vehicles. Therefore, they are included in the opponent’s parts and spare parts for motor vehicles covered by the earlier mark. They are identical.

The contested roof cases for vehicles; roof rack storage containers for land vehicles; trailer tents are similar to high degree to the opponent’s motor vehicles, in particular for locomotion by land. They are accessories to be used with vehicles and therefore they are complementary. They are often manufactured by the same producers and coincide in the target public and the 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 identical and similar to a high degree are directed at the public at large and at business customers with specific professional knowledge or expertise in the vehicle industry.

 

Taking into consideration the price of vehicles and the fact that they are not object of frequent purchases, consumers are likely to pay a higher degree of attention than for less expensive purchases (see 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 regarding cars). This also applies to trailers and motor homes. The degree of attention will also be high for the remaining goods (parts and fittings for vehicles) due to their specialised nature.

 

c) The signs

 

Paragon
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 ‘Paragon’ has a meaning for part of the relevant public, such as the English-, Czech- or Spanish-speaking parts. It is however meaningless for other parts of the relevant public, such as Dutch- or German-speaking parts. Since the meaning introduces a difference between the marks, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the element in question is meaningless.

The verbal element of the contested mark ‘PARAGAN’ is also meaningless for the public under analysis. Both ‘Paragon’ and ‘PARAGAN’ are distinctive for the relevant goods.

The contested mark includes a figurative element which is also distinctive for the relevant goods. However, 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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the sequence of letters ‘PARAG*N’. The earlier mark is a word mark and therefore, it is irrelevant whether it appears in lower or uppercase. The coinciding letters are represented in standard uppercase in the contested mark. The signs differ in their respective sixth letters ‘A/O’ and in the additional figurative element of the contested mark, which has less impact as explained above.

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 letters ‘PARAG*N’, present identically in both signs. The pronunciation differs in the sound of the respective penultimate letters, ‘A’ of the earlier mark and ‘O’ of the contested sign. The signs are also similar in rhythm and intonation.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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.

 

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, 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.

 

e) Global assessment, other arguments and conclusion

 

The goods are identical and highly similar and target the public at large and a specialised public in the vehicle industry. The level of attention will be relatively high.

The marks show visual and aural similarities resulting from the identical sequence of letters ‘PARAG*N’ which are present in the earlier mark and in the only verbal element of the contested sign, that will have more impact in consumers. The differences lie in one letter placed at the end, where consumers pay less attention, and in the figurative element of the contested mark, which has less impact.

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 this case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

 

Considering all the above, there is a likelihood of confusion on the part of the public for which the word ‘Paragon’ is meaningless (such as Dutch- or German-speaking parts). 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 EUTM registration No 3 705 051. 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, 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

 

Martina GALLE

Begoña URIARTE VALIENTE

Claudia SCHLIE

  

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.