OPPOSITION Nо B 2 806 258

Audi AG, Auto-Union-Str. 1, 85045 Ingolstadt, Germany (opponent)

a g a i n s t

Compensa Stand, S.L., C/ Pablo Picasso, s/n, 28320 Pinto (Madrid), Spain (applicant), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative).

On 03/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 806 258 is upheld for all the contested goods, namely:

Class 14: Key rings [trinkets or fobs].

2. European Union trade mark application No 16 003 311 is rejected for all the above goods. It may proceed for the remaining non-contested goods.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

On 21/11/2016, the opponent filed an opposition against European Union trade mark application No 16 003 311 for the figurative mark . The opposition was initially directed against all the goods in Classes 14 and 18, but following the communication to the opponent regarding the partial rejection of the contested sign, on 23/11/2020 the opponent limited the extent of the opposition and maintained it only against some of the goods in Class 14. The opposition is based on European Union trade mark registration No 12 109 112 for the word mark ‘RS’. The opponent invoked Article 8(1)(a) and (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 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, 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, inter alia, the following:

Class 14: Key rings [trinkets or fobs].

The contested goods are the following:

Class 14: Key rings [trinkets or fobs].

Key rings [trinkets or fobs] are identically contained in both lists of goods.

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 in question.

In the present case, the goods found to be identical are directed at the public at large.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

RS
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 earlier mark ‘RS’ is a word mark. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is generally irrelevant whether word marks are depicted in upper- or lower-case letters. The earlier mark does not deviate from the usual way of writing since it is written entirely in upper-case letters, which is a fairly common way of depicting words.

The contested sign is a figurative mark composed of the letters ‘RS’, which are depicted in a slightly stylised black typeface and are joined together at the bottom. However, this stylisation is not particularly striking and will be perceived by the relevant consumers as purely decorative and non-distinctive. In addition, the contested sign has no element that could be considered clearly more dominant than other elements.

The common verbal element ‘RS’ does not convey any clear and specific meaning in relation to the relevant goods in Class 14. Therefore, it is distinctive to a normal degree.

Visually, the signs coincide in the letter combination ‘RS’, which constitutes the earlier mark in its entirety and is the only verbal element of the contested sign. They differ merely in the slight stylisation of these letters in the contested sign. The verbal element of the contested sign will attract the public’s attention to a greater extent, as an indicator of the commercial origin of the relevant goods.

In addition, the earlier mark is a word mark and the protection offered by the registration of a word mark applies to the word itself and not to the individual graphic or stylistic characteristics that the mark might possess. Therefore, it cannot be excluded that it could be stylised in a similar manner to the contested sign.

Therefore, the marks are visually similar to a high 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 ‘RS’, present identically in both signs. Therefore, the signs are aurally identical.

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

Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical. In such cases, the differences between the signs should be significant and relevant to a degree that allows consumers to safely distinguish the signs and to exclude the likelihood of confusion between them (see, to this effect, 13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 53). The goods target the general public and the level of attention varies from average to high. The degree of inherent distinctiveness of the earlier mark is normal.

The differences between the signs caused by the slight stylisation of the contested sign are insufficient to counterbalance the similarities between them, since this degree of stylisation is not sufficient to overshadow the perception of the verbal element ‘RS’. Therefore, since the signs are visually similar to a high degree, aurally identical and the conceptual aspect does not influence the assessment of the similarity of the signs (which means that average consumers cannot rely on any conceptual differences in order to safely distinguish between them), the signs are sufficiently similar to lead to a likelihood of confusion between them.

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 covered are from the same or economically linked undertakings. Considering that incorporating a new stylisation in a mark’s lettering is standard market practice, and given the presence of the same distinctive element, ‘RS’, in both signs, it is highly conceivable that the relevant consumers 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 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 109 112. It follows that the contested trade mark must be rejected for all the contested goods. It may proceed for the remaining non-contested goods.

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(1)(a) 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, 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Liliya YORDANOVA

Anna PĘKAŁA

Lars HELBERT

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.