OPPOSITION No B 2 934 720

El Corte Ingles, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

F/ACTS: GmbH, Hanauer Landstraße 293, 60314 Frankfurt am Main, Germany (applicant), represented by Melchers Rechtsanwälte Partnerschaftsgesellschaft mbB, Darmstaedter Landstraße 108, 60598 Frankfurt, Germany (professional representative).

On 28/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 934 720 is partially upheld, namely for the following contested services:

Class 35: Advertising, marketing and promotional services; Organising, arranging and conducting of exhibitions, presentations and shows for commercial and advertising purposes; Advertising via online electronic communications networks; Collating and systematic ordering of data in electronic databases; Advertising services and sales promotion, for others, in particular via computers and electronic communications networks; Sales promotions at point of purchase or sale, for others; All of the aforesaid in relation to the motor vehicle industry and motor vehicles.

2. European Union trade mark application No 16 455 016 is rejected for all the above services. It may proceed for the remaining goods and services in Classes 9, 41 and 42.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 455 016 for the word mark ‘ClickCar’. The opposition is based on European Union trade mark registration No 11 823 051 for the figurative mark .

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 and services

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

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists’ materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers’ type; Printing blocks.

Class 35: Advertising; Business management; Business administration; Office functions.

Class 38: Telecommunications.

Class 39: Storage and distribution of goods of all kinds.

The contested goods and services are the following:

Class 9 Software and software applications; Computer e-commerce software; Software for commerce over a global communications network; All of the aforesaid software in relation to the purchase of motor vehicles; All of the aforesaid software in relation to the complete process of purchasing motor vehicles, in particular bringing together and configuration, and selection and test driving, and completing the purchase and financing and ultimately including delivery.

Class 35: Advertising, marketing and promotional services; Organising, arranging and conducting of exhibitions, presentations and shows for commercial and advertising purposes; Advertising via online electronic communications networks; Collating and systematic ordering of data in electronic databases; Advertising services and sales promotion, for others, in particular via computers and electronic communications networks; Sales promotions at point of purchase or sale, for others; All of the aforesaid in relation to the motor vehicle industry and motor vehicles.

Class 41: Exhibitions and organisation of exhibitions for entertainment purposes; Arranging of displays for cultural purposes; Entertainment, Entertainment, Entertainment.

Class 42: Software development; Software creation; Software programming; Computer software design; Installation of software; Providing of software; Rental of software; Software as a service [SaaS]; Maintenance of software; Software maintenance; Consultancy in relation to software; All of the aforesaid software in relation to the purchase of motor vehicles; All of the aforesaid software in relation to the complete process of purchasing motor vehicles, in particular bringing together and configuration, and selection and test driving, and completing the purchase and financing and ultimately including delivery.

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 terms ‘in particular’ and ‘including’, used in the applicant’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that 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.

Contested goods in Class 9

The contested software and software applications; computer e-commerce software; software for commerce over a global communications network; all of the aforesaid software in relation to the purchase of motor vehicles; all of the aforesaid software in relation to the complete process of purchasing motor vehicles, in particular bringing together and configuration, and selection and test driving, and completing the purchase and financing and ultimately including delivery are various types of software and software products related to the trade of motor vehicles. All of this software is meant to facilitate the purchase and choice of a car or other motor vehicle and to facilitate the process of selling vehicles. The relevant public of these goods is made up of those involved in the vehicle purchasing sector, such as vehicle producers and dealers and, to some extent, the bank institutions financing the purchases. Although average consumers can buy a car using this specific software, they are not the target public of these goods. The public at large will only use the software, but will not purchase or buy it because they do not need to. These particular software and applications do not satisfy the needs of the general public. The goods target the specialised public, namely business customers with specific professional knowledge, expertise and needs.

Telecommunications refer to the exchange of information by electronic and electrical means over a significant distance. These services are often provided by highly specialised companies and target mainly the public at large. The opponent’s telecommunications – as they are services, in contrast to the contested goods – have a different nature, purpose and method of use from and are not in competition with the contested goods. Moreover, even when these services also target the professional public, they have different distribution channels and methods of use from and are not complementary to the contested goods. The mere facts that telecommunications are used by various vehicle producers to communicate with their clients and that it is possible for telecommunications to be incorporated in the contested goods do not make the contested goods similar to telecommunications services. Therefore, the contested goods are dissimilar to the opponent’s telecommunications.

The contested goods are also dissimilar to the opponent’s goods in Class 16, since they have clearly different natures, usual origins, trade channels and methods of use and they are neither complementary to nor in competition with each other. The degree of dissimilarity between the contested goods and the opponent’s services in Classes 35 and 39 is even greater. These goods and services have different natures and purposes. They are not complementary or in competition. They have different distribution channels and sales outlets. The same kinds of undertakings are not usually involved in the production or provision of these goods and services. They are therefore dissimilar.

Contested services in Class 35

The Opposition Division has taken into consideration that all the contested services are related to the motor vehicle industry and motor vehicles (as indicated by the following: all of the aforesaid in relation to the motor vehicle industry and motor vehicles), but this clarification is not explicitly mentioned in the comparisons of the services, since it does not affect the outcome. This clarification does not affect the nature of the services; it simply narrows the target customers of the services to those in the motor vehicle industry. Moreover, it is typical for the services in Class 35 to be provided to companies in different industries and this does not change the character of the services.

The contested advertising, marketing and promotional services; advertising via online electronic communications networks; advertising services and sales promotion, for others, in particular via computers and electronic communications networks; sales promotions at point of purchase or sale, for others either are included in or overlap with (e.g. marketing services) the opponent’s broad category of advertising. Therefore, they are identical.

The contested organising, arranging and conducting of exhibitions, presentations and shows for commercial and advertising purposes are similar to the opponent’s advertising. These services have the same purpose, providers and relevant public.

The opponent’s office functions are the internal day-to-day operations of an organisation, including administration and support services in the ‘back office’. They mainly cover activities that assist with the working of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, the compilation of information into computer databases, invoicing and the administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment. Therefore, the contested compiling and collating of data in computer databases is included in the broad category of the opponent’s office functions in Class 35. Therefore, they are identical.

Contested services in Class 41

The contested exhibitions and organisation of exhibitions for entertainment purposes; arranging of displays for cultural purposes; entertainment are dissimilar to all the opponent’s goods and services.

The opponent’s goods in Class 16 are common consumer goods that are produced by manufacturers in the paper and printed goods industry and are stationery intended for household purposes. Services and goods do not have the same nature. Moreover, the purposes of the contested services and the opponent’s goods are clearly different and they are not complementary. Finally, these goods and services do not have the same end users and are usually provided or offered by different undertakings.

In addition, the Opposition Division is of the opinion that, even if the opponent’s printed matter and instructional and teaching material (except apparatus) in Class 16 could be used for entertainment purposes or in the organisation of an exhibition, this is not sufficient to find a similarity between the opponent’s goods and the contested services, considering all their differences, detailed above.

The opponent’s advertising services (Class 35) consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale. The opponent’s business management; business administration; office functions, in the same class, are all various business management services that are intended to help companies manage their businesses by setting out the strategy and/or direction of companies or by providing assistance or support in day-to-day operations, mainly secretarial services. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, planning and administration. They are usually rendered by companies specialised in this specific field, such as business consultants.

Consequently, the opponent’s services in Class 35 require different types of knowledge and expertise from the contested services. Moreover, these services do not have the same distribution channels, as they will have different types of providers and will target different publics; in particular, the services in Class 35 target professional customers, whereas the services in Class 41 usually target the public at large. These services are not complementary to or in competition with each other; the fact that the contested services may, for instance, appear in advertisements is insufficient to find a similarity between these services.

Moreover, the opponent’s telecommunication services in Class 38 are provided by different types of enterprises (usually highly specialised technical companies) and have different distribution channels from the contested services; they are also neither complementary nor in competition.

The abovementioned reasons also apply to the opponent’s storage and distribution of goods of all kinds in Class 39 (their providers are usually logistics companies). Moreover, the contested services cannot be stored or distributed in the sense of the opponent’s services in Class 39.

Contested services in Class 42

The contested software development; software creation; software programming; computer software design; installation of software; providing of software; rental of software; software as a service [SaaS]; maintenance of software; software maintenance; consultancy in relation to software; all of the aforesaid software in relation to the purchase of motor vehicles; all of the aforesaid software in relation to the complete process of purchasing motor vehicles, in particular bringing together and configuration, and selection and test driving, and completing the purchase and financing and ultimately including delivery are dissimilar to the opponent’s telecommunications in Class 38. The development of specialised software and all other similar and following processes meant to facilitate the sales process of a given industry is not the business of telecommunications companies. Bearing in mind the abovementioned definition of telecommunications, these services have nothing relevant in common with the contested services, as they have, at least, different producers and distribution channels and they satisfy different needs.

In addition, the contested services are dissimilar to the opponent’s remaining goods and services in Classes 16, 35 and 39. The opponent’s goods have a different nature from the contested services and all these goods and services of the opponent have different purposes and methods of use from the contested services. They are also not complementary to or in competition with the contested services. Furthermore, they are not distributed through the same channels and they have different providers. Therefore, these goods and services are dissimilar.

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 and similar are directed partly at the public at large and partly at a professional public with specific professional knowledge or expertise. The degree of attention will vary from average to high depending on the nature (whether or not they are specialised), frequency of purchase and price of the services.

c) The signs

	ClickCar
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 is a figurative mark containing the verbal elements ‘CLICK’ and ‘CAR’ connected by an ampersand. The ampersand symbol, ‘&’, is used as shorthand for the conjunction ‘and’ and is commonly used in trade (16/02/2017, R 1050/2016-1, Metal&Glass, § 18); therefore, it is considered a weak element. The figurative aspects of the earlier mark, namely the grey rectangular background, the slightly bold letters in black and light grey, the thin white outline around the letters and the white ampersand between the words, are commonplace and banal. Therefore, they are purely decorative and so are non-distinctive.

The contested sign is a word mark, ‘ClickCar’. In the case of word marks, it is the word as such that is protected and not its written form. 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 which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Consequently, it is irrelevant whether the mark is depicted in lower or upper case letters.

Even though the relevant public normally perceives a trade mark as a whole, it may perceive one-word signs as being composed of different components, in particular in cases where the parts have a clear and evident meaning, as is true in the present case.

In the present case, the contested sign, like the earlier mark, is composed of the words ‘click’ and ‘car’.

Although both of these words are English words, it is reasonable to assume that a large part of the relevant public (which, for the services in Class 35, is the professional public), including the non-English-speaking part, will understand the meanings of these words, since ‘click’ (meaning to ‘make a short sound or to make a computer do something by pressing a button on the mouse’) and ‘car’ (meaning ‘a road vehicle for one driver and a few passengers’) are very commonly used and basic English words. The word ‘car’ is well known because, for example, ‘rent a car’ services are present in all European countries and the word ‘click’ is an onomatopoeic word, which means it imitates the sound of the object, and therefore it is an easy-to-understand word.

The word ‘car’ is a weak element, as it may be perceived as an indication of characteristics of the services, for example their object. The word ‘click’ does not have any particular meaning in relation to the services. Since the signs consist of the same words and their differing elements are non-distinctive, it is irrelevant that one of the words is weak. However, the arrangement of these two words, namely as either ‘clickcar’ or ‘click & car’, does not convey any particular meaning in relation to the services; only because there is a weak element present is there some allusiveness to the automobile industry.

Visually and aurally, the signs coincide in the words ‘CLICK*CAR’, irrespective of the different pronunciation rules in different parts of the relevant territory. As the marks differ only in the additional element ‘&’ (which could will be pronounced in different languages, depending on the consumer’s nationality) and in the slight stylisation of the earlier mark, both of which are weak elements as explained above, the signs are visually and aurally highly similar.

Conceptually, contrary to the applicant’s claim, there is no reason to assume that the combination ‘ClickCar’ will be perceived as having a significantly different meaning from the combination ‘Click&Car’. Neither combination is common in the market for the services in question and the public will not be certain of how to interpret these combinations. However, the simple juxtaposition of two words, as in the contested sign, does not change the individual words’ usual meanings or create a new or different understanding of them. Therefore, the public will base its perception of the signs on the usual meanings of their individual words, which are easily recognisable and understandable, even in the one-word contested sign. Consequently, the signs are conceptually at least highly similar.

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 the relevant services 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 some weak elements in the mark, as stated above in section c) of this decision.

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).

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), and that 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 goods and services are identical, similar or dissimilar. The signs are visually, aurally and conceptually highly similar. The verbal elements of the earlier mark form the entire contested mark. Even though the word ‘car’ alone is weak, and therefore allusive of the relevant services, the differing elements are non-distinctive and there are no further elements that could allow the public to differentiate between the signs.

Therefore, it is reasonable to find that the relevant public is likely to confuse the marks in relation to the identical or similar services in question or believe that those services come from the same undertaking or, as the case may be, economically linked undertakings; this is true regardless of the degree of attention paid.

In relation to the applicant’s claim that a large number of trade marks registered by the EUIPO contain the words ‘click’ or ‘car’ in combination with other elements and therefore the distinctiveness of the combination ‘click’ and ‘car’ is diluted, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that it is not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the words ‘click’ and ‘car’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 823 051 for the figurative mark .

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ewelina SLIWINSKA

Maria Slavova

Dorothée SCHLIEPHAKE

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.