OPPOSITION Nо B 2 962 820

 

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

 

Stefan Voloseniuc, 6 Devonshire Business Park, Chester Road, Borehamwood WD6 1NA, United Kingdom (applicant), represented by Potter Clarkson LLP, The Belgrave Centre Talbot Street, Nottingham NG1 5GG, United Kingdom (professional representative).

On 13/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 2 962 820 is upheld for all the contested services.

 

2.	European Union trade mark application No 16 282 204 is rejected in its entirety.

 

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

 

REASONS

 

On 26/09/2017, the opponent filed an opposition against all the goods and services initially covered by European Union trade mark application No 16 282 204 ‘VOLO’ (word mark), which was subsequently limited to cover only services in Classes 37 and 42. 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) EUTMR 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’ (word mark).

 

a) The services

 

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

 

Class 37: Building construction; installation services; installation, service, repair, inspection, restoration, maintenance, reconditioning, diagnostic tuning, cleaning, painting, polishing and preservation services in relation to vehicles, engines/motors and machines (including drive units and construction, agricultural and forestry machines), power hand tools, workshop appliances and devices, or parts, fittings and accessories (including telecommunication equipment) for the aforesaid; emergency road side assistance; rental of vehicles, engines/motors and machines (including drive units and construction, agricultural and forestry machines), and of tools and workshop equipment; looking after and overhauling of motor vehicles in motor-sport events; reservation of garage services; technical service for motor vehicles during motor-sports events.

Class 42: Engineering services.

The contested services, further to a limitation filed by the applicant on 06/04/2020, are the following:

Class 37: Building, construction and demolition services; rental of tools, plant and equipment for construction and demolition; providing information relating to the rental of construction machines and apparatus; machinery repair services; building repair and renovation; cleaning of machines; cleaning of property; domestic cleaning.

Class 42: Civil engineering services; engineering services.

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 services in Class 37

 

The contested building, construction services; machinery repair services; cleaning of machines are identically contained in both lists of services (including synonyms).

The contested rental of tools, plant and equipment for construction and demolition; providing information relating to the rental of construction machines and apparatus is included in, or overlaps with, the opponent´s rental of vehicles, engines/motors and machines (including drive units and construction, agricultural and forestry machines), and of tools and workshop equipment. Therefore they are identical.

The contested building repair and renovation are included in, or overlap with, the opponent´s building construction. Therefore they are identical.

The contested demolition services are similar to the opponents building construction. Demolition services are necessary in some circumstances prior to construction and to that extent they are complementary. They can be provided by the same companies and target the same public.

The contested cleaning of property; domestic cleaning both relate to maintenance, in particular for residential and commercial buildings. These services come under the umbrella of facility management and include common maintenance tasks. Hence, undertakings rendering the opponent’s building construction services are also involved in maintenance, cleaning and repair services, e.g. in the case of the restoration of these goods. It is therefore common practice for the same undertaking to render the contested services and the opponent’s building construction services. In addition, the channels of trade and the public are the same and the services are complementary, since there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (01/03/2005, T-169/03, Sissi Rossi, EU:T:2005:72, § 35, 60, 98). As such, the case-law definition of complementarity implies that complementary goods or services can be used together, which presupposes that they are intended for the same public. As outlined above, this clearly applies to the services at issue. Given that they have a similar nature and fall in the same broad field of the building industry, they are strictly complementary and can be provided by the same companies, they are similar to a low degree (14/04/2020, R 825/2018-2, O2 home services (fig.) / O2 (fig.) et al.).

Contested services in Class 42

 

Engineering services are identically contained in both lists of services.

The contested civil engineering services are included in the broad category of the opponent’s engineering services. Therefore, they are identical.

 

 

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 services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise, such as those in the construction or engineering sector.

 

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased.

 

c) The signs

 

VOLVO	VOLO
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 ‘VOLO’ of the contested sign is meaningful in some of the relevant languages, such as Spanish (where it is the third person singular of the past tense of the verb ‘to fly’ https://dle.rae.es/volar?m=form) or Italian (where it translates as ‘flight’ or ‘I fly’ https://www.garzantilinguistica.it/ricerca/?q=volare). In other relevant languages it is meaningless, such as English or French. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which VOLO is meaningless, such as the French- or English-speaking part of the public.

The applicant argues that the average consumer will easily recognise that the ‘VOLO’ mark represents a shortened form of the Applicant’s surname Voloseniuc. However, no evidence as to the prevalence of this shortened form amongst the relevant public has been provided, and as such, the Opposition Division cannot uphold this claim.

 

The element ‘VOLVO’ that makes up the whole of the earlier mark has no meaning for the relevant public and is, therefore, 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.

  

The applicant also states, correctly, that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

The Courts have not defined exactly what a short sign is. However, signs with three or less than three letters/numbers are considered by the Office as short signs (see the Guidelines, Part C Opposition, Section 2, Chapter 4, point 6.3 Short signs). In this case, however, the signs have five and four letters, so are not short signs.

 

Visually and aurally, the signs coincide in the letters ‘V-O-L-*-O’ (or their sound) and differ in the additional penultimate letter V (or its sound) of the earlier mark. Aurally, they have the same number of syllables, rhythm and intonation.

Therefore, the signs are visually and aurally similar to an average degree.

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.

 

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 services 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

 

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). 

In the present case, the signs have been found to be visually and aurally similar to an average degree, on account of their coincidence in four out of the five letters that make up the earlier mark and all the letters of the contested sign. Moreover, the additional letter is the repetition of a letter that is found in the contested sign once. The earlier mark has a normal degree of inherent distinctiveness. The services covered by the signs have been found identical or similar to varying degrees and target both the general and the professional public, with a degree of attention that will vary from average to high.

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).

  

Considering all the above, there is a likelihood of confusion on the part of the public for whom the contested sign is meaningless, such as the English- or French-speaking part of the public, including for those services found to be similar to only a low degree. 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, and 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 2 361 087. It follows that the contested trade mark must be rejected for all the contested services.

 

As the earlier European Union trade mark registration No 2 361 087, leads to the success of the opposition and to the rejection of the contested trade mark for all the services 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

 

 

Helena GRANADO CARPENTER

Helen Louise MOSBACK

Marzena MACIAK

 

 

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.