OPPOSITION No B 2 887 142

Theo Förch GmbH + Co. KG, Theo-Förch-Str. 11, 74196 Neuenstadt, Germany (opponent), represented by STT Sozietät Thews & Thews, Augustaanlage 32, (Augusta Carree), 68165 Mannheim, Germany (professional representative)

a g a i n s t

Fortech, Zwycięstwa 32, 95-082, Chechło Pierwsze, Poland (applicant).

On 31/10/2018, the Opposition Division takes the following:

DECISION:

1. Opposition Decision B 2 887 142 of 29/03/2018 is hereby revoked.

2. Opposition No B 2 887 142 is upheld for all the contested goods, namely:

Class 12 Interior trim parts of automobiles; Brake segments for motor cars; Automobiles and structural parts therefor.

3. European Union trade mark application No 16 072 308 is rejected for the aforesaid contested goods. It may proceed for the remaining goods in class 12 and the services in class 40.

4. The applicant bears the costs, fixed at EUR 620.

ON THE REVOCATION OF THE DECISION OF 29/03/2018

In accordance with Article 103 EUTMR, where the Office has taken a decision which contains an obvious procedural error attributable to the Office, it shall ensure that the decision is revoked. Revocation shall be determined within one year from the date on which the decision was taken, after consultation with the parties to the proceedings.

On 12/09/2018, the Office informed the parties that it had the intention to revoke the decision dated 29/03/2018 due to an error attributable to the Office, namely that the dictum reflected that the contested EUTM be refused in full (as opposed to in part) as a result of the successful opposition, and that it would consider any observations submitted by the parties in this regard in accordance with Article 103 EUTMR. No submissions in this regard were made by the 13/10/ 2018 deadline.

Therefore, the Decision on Opposition B 2 887 141, dated 29/03/2018, is hereby revoked and is replaced by the present decision.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 072 308, 16 072 308namely against some of the goods in Class 12. The opposition is based on European Union trade mark registration No. 98 797 35. 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 goods

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

Class 12: Vehicle mirrors; Brake linings and brake pipes for vehicles.

The contested goods are the following:

Class 12: Interior trim parts of automobiles; Brake segments for motor cars; Automobiles and structural parts thereof.

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

The contested brake segments for motor cars overlap with the contested brake linings and brake pipes for vehicles. Therefore, they are identical.

The contested automobiles are similar to the opponent´s vehicle mirrors. When purchasing a car, the general public knows that the car incorporates many items from many sources and that the car manufacturer might assemble components that have been manufactured by others. However, as far as the consumer of a car is concerned, the goods are normally offered under only one sign, which makes it almost impossible for the general public to identify other manufacturers or to differentiate their source of production. While there are exceptions to this which include batteries or tyres, these exceptions do not extend to vehicle mirrors which are part and parcel of a car´s interior and exterior and do not feature separate signs. They share distributors and producers, target the same public and are complementary. When purchasing replacement vehicle mirrors e.g for repair purposes, the consumer will assume that they have the same commercial origin as the vehicle of which it forms part. The same reasoning applies to the contested structural parts thereof in this instance and the contested interior trim parts of automobiles. Therefore they are similar to the opponent’s vehicle mirrors.

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 in part at the public at large and in part at business customers in the automobile industry with specific professional knowledge or expertise.

Taking into consideration the price of certain car parts and the safety considerations inherent in the selection of brake parts, consumers are likely to pay a higher degree of attention for those goods than for purchases which are less key such as mirrors. The degree of attention will vary from average to high.

3. The signs

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 signs are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on a non English-speaking part of the public such as the Spanish-speaking public or the Polish-speaking public.

The earlier mark is a figurative mark made up of the verbal element FORCH depicted in a bold font which is black save for the second letter, which is essentially depicted as a stylised geometric shape, which is red in colour. Given that the goods are related to vehicle parts, the stylisation is reminiscent of a spanner. Nevertheless, its circular centre clearly depicts the letter ‘O’. The opponent indicated that the small triangular segments towards the apex will be perceived as an umlaut, however this will not apply to the relevant public. The verbal element FORCH has no meaning for the relevant public and is therefore distinctive in respect of the goods. The figurative elements have a purely decorative impact and therefore, have non-distinctive character.

The contested sign is also a figurative mark. It is made up of the verbal element FORTECH depicted in a stencil-effect font which is dark in colour save for the stylised second letter, which is depicted in red. Given that the goods are related to vehicle parts, the stylisation is reminiscent of a tool, nevertheless it also clearly depicts the letter ‘O’. The relevant public will not discern discrete elements or break down the sign. It will be perceived as an invented word and is, therefore, distinctive. The figurative elements have a purely decorative impact and therefore, have non-distinctive character.

There are no dominant elements. 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).

Visually, the signs coincide in the letter strings ‘FOR**CH’, five letters in common. They differ only in the letters ‘TE’ of the contested sign which have no counterpart in the earlier sign and which, being in the middle of the earlier marks could easily be overlooked by consumers’, and in their respective fonts and the stylisations of the letter ‘O’, both in red, which are highly reminiscent of each other and which are non-distinctive. 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.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘FOR**CH’, present in both signs. The pronunciation differs only in the letters ‘TE’ of the earlier sign, which have no counterpart in the contested sign.

Therefore, the signs are similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the stylisations of the letter ‘O’ coincide in that they both may evoke a tool-like concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the verbal elements, which have no meaning. 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.

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. 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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Account is 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 contested goods are either identical or similar, and the signs are highly similar from a visual and aural perspective. The earlier sign is distinctive.

Considering all the above, there is a likelihood of confusion on the part of the Spanish and Polish-speaking public, because the figurative differences between the signs are non‑distinctive and the sign´s letters are identical at the beginning and at the end. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No. 98 797 35. 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 (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

Ana MUÑIZ RODRIGUEZ

Keeva DOHERTY

Jessica LEWIS

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.

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