OPPOSITION No B 2 867 052

Atlantic Parts - Distribuição De Peças Auto, S.A., Recta da Granja, Campo Raso, Parque Raso, Armazém 3, 2710 Sintra, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon 14, 1249-103, Lisboa, Portugal (professional representative)

a g a i n s t

Auto-Sueco Lda, Via Marechal Carmona 1637, 4100 Porto, Portugal (applicant), represented by Gastão Da Cunha Ferreira Lda., Rua dos Bacalhoeiros nº4, 1100-070 Lisboa, Portugal (professional representative).

On 27/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 867 052 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 services of European Union trade mark application No 16 002 917 ‘AS PARTS’. The opposition is based on Portuguese trade mark registration No 366 127 . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

As already notified on 04/01/2018, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 goods and services

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

Class 1: Antifreeze products for radiators.

Class 7: Water pumps for motors and engines.

Class 12: Parts and accessories (not included in other classes), including shock absorbers and braking material.

The contested services are the following:

Class 35: Retail sales of automobiles; Retailing of windows for vehicles and for building, and parts and fittings for the fitting and placement thereof, and dissemination of advertising relating to the aforesaid articles; Import-export agencies and exportation of vehicles and public relations; Sales promotion for others of motor vehicles; Publicity and advertising by all means including the Internet; business consultation and Retailing, Including via the internet; Dissemination and exhibition of goods; Market research and studies.

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 term ‘including’, 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).

It must also be noted that the limitation of the applicant’s list of services to ‘including the Internet or including via the Internet’ has no impact on the comparison of these services, since the limitation to a particular field of use does not change the basic nature of the services.

Furthermore, according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale. Retail services relating to the sale of particular goods and other goods are not similar. It should be remembered that in principle goods are not similar to services. Too broad a protection would be given to retail services if similarity were found even where the goods sold at retail were highly similar to the goods covered by the other mark.

Furthermore, retail services concerning the sale of particular goods are similar to a low degree to those particular goods whenever the goods covered by the retail services and the specific goods covered by the other mark are identical in, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

In the present case, the goods covered by the contested retailing of windows for vehicles and parts and fittings for the fitting and placement thereof fall under the broader category of the opponent’s parts and accessories (not included in other classes), including shock absorbers and braking material in class 12. Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. Therefore, these goods and services are similar to a low degree.

However, the goods covered by the contested retail sales of automobiles; retailing of windows for building, and parts and fittings for the fitting and placement thereof namely, automobiles and windows for building, and parts and fittings [of windows for building] are not identical to the opponent’s goods in classes 1, 7 and 12. Therefore, these goods and services are dissimilar because apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Moreover, the retail services in general are not similar to any goods that are capable of being sold by retail. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other. Therefore, the contested retailing, including via the internet are dissimilar to the opponent’s goods in classes 1, 7 and 12.

The contested dissemination of advertising relating to the aforesaid articles [windows for vehicles and for building, and parts and fittings for the fitting and placement thereof]; public relations; sales promotion for others of motor vehicles; publicity and advertising by all means including the Internet; dissemination and exhibition of goods are advertising services. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, dissemination of advertising relating to the aforesaid articles [windows for vehicles and for building, and parts and fittings for the fitting and placement thereof]; public relations; sales promotion for others of motor vehicles; publicity and advertising by all means including the Internet; dissemination and exhibition of goods are dissimilar to the opponent’s goods in classes 1, 7 and 12.

The contested import-export agencies and exportation of vehicles are services that relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. The contested business consultation including via the internet; market research and studies are business management services that are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. These services do not share anything in common with any of the opponent’s goods in classes 1, 7 and 12. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor complementary to each other. Therefore, they are dissimilar.

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 services found to be similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

Although the degree of attention of business customers is average, since they make this purchase much more frequently, the degree of attention of the public at large is high precisely because it is not a usual purchase for them and because the cost is likely to be high.

3. The signs

AS PARTS
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 contested sign is a figurative mark consisting of the letters ‘AP’ in black standard upper case letters on the left of which a kind of a half moon is depicted in black that starts at the bottom left of the letter ‘A’ and ends at the top of the letter ‘P’. The English words ‘ATLANTIC PARTS’ are written underneath in a smaller size, rendering the letters ‘AP’ more visually dominant.

Although the letters ‘AP’ have no meaning as such, and are distinctive, they are likely to be understood as the acronym of the text underneath, ‘ATLANTIC PARTS’. Although these words are in English, they will be understood as the equivalent of the Portuguese words ‘partes Atlântico’. Taking into consideration that the retail services found similar to a low degree are provided in relation to parts of vehicles, the expression ‘ATLANTIC PARTS’ is allusive since it will be understood that the retail of spare parts is located in the area of the Atlantic coast. Therefore, its distinctiveness is below average.

The contested sign is also composed of a less distinctive figurative element of a purely decorative nature since it is a simple geometrical shape. Therefore, the verbal elements are more distinctive than the figurative element.

On the other hand, the earlier mark is a word mark consisting of the verbal elements ‘AS PARTS’. There is no indication that confirms that the combination of letters ‘AS’ is an acronym. Instead, since it is the equivalent in Portuguese of the plural feminine definite article ‘the’, it is either likely to be understood as such or as the equivalent of the word ‘ace’, the playing card ranked as the highest card. Since for the part of the public that perceive the word ‘AS’ as being the highest ranked playing card, this element has a laudatory character, the Opposition Division will assume that a significant part of consumers will rather associate the letters ‘AS’ to the distinctive plural feminine definite article ‘the’ since it is the most advantageous scenario for the opponent.

Moreover, although the English word ‘PARTS’ in the earlier mark has no meaning as such, it will be understood due to its closeness to the equivalent word in Portuguese as already mentioned above. Therefore, its distinctiveness is reduced.

Visually and aurally, the signs coincide in the letter/sound ‘A’ and in the English word/sound ‘PARTS’ which distinctive character is reduced. However, they differ in the letter/sound ‘S’ of the earlier mark and in the letter/sound ‘P’ of the contested sign, both placed in their respective second position, and in the additional word ‘ATLANTIC’ of the contested sign and in its corresponding sound. Visually, the signs also differ in the less distinctive figurative element of the contested sign that has no counterpart in the earlier mark.

In view of the reduced degree of distinctiveness of the main coinciding component, the word ‘PARTS’, and since the position it occupies within the contested sign is rather secondary, the signs are visually similar at most, to a low degree since, the overall impression they cause is different. Aurally, and assuming that the words ‘ATLANTIC PARTS’ will be pronounced, the signs are similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the meaning of ‘parts’, the signs are conceptually similar to a low degree. In any event, in view of the reduced distinctive character of this element, this coincidence will have little impact on 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.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for the goods in question, namely the goods in Class 12. 

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

Furthermore, 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).

In the present case, the signs are visually, aurally and conceptually similar to a low degree. This is because the similarity between the signs results from, almost entirely, in the lowly distinctive word ‘PARTS’. The further coincidence in the letter ‘A’ is eclipsed by the other differing non-coinciding elements between the signs. Indeed, the coincidence in one letter is not sufficient taking into consideration the limited number of letters in the alphabet and, as already mentioned above, this letter is part of an acronym in the contested sign while this is not the case in the earlier mark. Therefore, consumers have no reason to make any connection between the two combinations of letters.

Moreover, even if some of the additional elements of the contested sign do not have more distinctive character than the word ‘PARTS’ that the signs have in common, they still contribute to alter the overall impression of the contested sign.

Consequently, in view of the fact that the distinctiveness of the earlier trade mark as a whole is low and that the degree of attentiveness of the public varies from average to high, the Opposition Division considers that the non-coinciding elements between the signs create sufficient distance between them to help consumers to differentiate between them, especially when the services in question were only found to be similar to a low degree.

Considering all the above, there is no likelihood of confusion, or even of association, on the part of the public. Therefore, the opposition must be rejected.

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

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

The Opposition Division

Benoit VLEMINCQ

Sandra IBAÑEZ

Steve HAUSER

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.