OPPOSITION No B 2 910 654

Redrock Machinery Limited, 77 Redrock Road, Collone, Armagh BT60 2BL, United Kingdom (opponent), represented by Maclachlan & Donaldson, 2b Clonskeagh Square, Clonskeagh Road, D14 V0N2, Dublin, Ireland (professional representative)

a g a i n s t

Mountain Top Industries ApS, Pedersholmparken 10, 3600 Frederikssund, Denmark (applicant).

On 22/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 910 654 is upheld for all the contested goods.

2. European Union trade mark application No 16 491 706 is rejected in its entirety.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 goods of European Union trade mark application No 16 491 706 for the word mark ‘RedRockDirect’. The opposition is based on European Union trade mark registration No 3 831 229 for the word mark ‘REDROCK’. The opponent invoked Article 8(1)(b) and (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.

1. The goods

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

Class 12: Trailers; tractors; tankers [land vehicles]; construction and agricultural vehicles included in class 12; parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 12: Parts and fittings for vehicles.

The contested parts and fittings for vehicles include, as a broader category, the opponent’s parts and fittings for all the aforesaid goods (trailers; tractors; tankers [land vehicles]; construction and agricultural vehicles included in class 12). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at both the public at large and business customers in the vehicle industry with specific professional knowledge or expertise.

Taking into consideration the price of certain vehicle parts and the safety considerations inherent in the selection of certain goods, such as airbags or anti-theft, security and safety devices and equipment for vehicles, consumers are likely to pay a higher degree of attention when purchasing those goods than goods that are less crucial such as mirrors. Consequently, the degree of attention will vary from average to high.

3. The signs

REDROCK	RedRockDirect
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).

Although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the fact remains that the public is likely to break a word into word elements which for it have a specific meaning or which resemble words known to it (see, by analogy, 13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In the present case, the earlier trade mark, ‘REDROCK’, and the contested sign, ‘RedRockDirect’, as a whole have no meaning in English, but the English-speaking part of the public will split them into several elements, namely ‘RED’ and ‘ROCK’ in the earlier trade mark and ‘Red’, ‘Rock’ and ‘Direct’ in the contested sign, because all of the elements have a clear meaning in English.

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.

As explained above, the elements that the signs have in common, ‘RED’ and ‘ROCK’, are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the territories where English is spoken, such as Ireland, Malta and the United Kingdom.

The word ‘RED’, present at the beginning of both signs, will be understood by the relevant public as an adjective meaning ‘of a colour at the end of the spectrum next to orange and opposite violet, as of blood, fire, or rubies’ (information extracted from Oxford Living Dictionaries on 13/06/2018 at https://en.oxforddictionaries.com/definition/us/red). Account should be taken of the fact that the words ‘RED’ and ‘ROCK’ are likely to be perceived as a logical and conceptual unit, in which the adjective ‘RED’ qualifies the noun following it, namely ‘ROCK’. As a result, even if the element ‘RED’ has no meaning in relation to the relevant goods, it will be perceived as a secondary element with less trade mark significance.

The element ‘ROCK’ of both signs will be understood, inter alia, as ‘the dry solid part of the earth’s surface, or any large piece of this that sticks up out of the ground or the sea’ (information extracted from Cambridge Dictionary on 13/06/2018 at https://dictionary.cambridge.org/dictionary/english/rock) by the relevant public. This element has no bearing on the relevant goods and therefore it is distinctive.

The verbal element ‘DIRECT’ in the contested sign will be associated with the idea of something ‘without delay or evasion; straightforward’ or obtained ‘without intermediaries’. Since this element will be perceived as indicating that the goods in question can be obtained ‘without detour’ and ‘without intermediaries’, that is, quickly and easily (or, in other words, directly), it has a somewhat laudatory semantic content. It therefore has a low degree of distinctiveness for all the goods in question.

It should be noted that 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). Therefore, as correctly claimed by the opponent, it is irrelevant whether the earlier and contested signs are depicted in lower or upper case letters, or in a combination thereof.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, namely a red rock, and the additional word in the contested sign will be perceived as a weak element, the signs are conceptually similar to a high degree.

Visually and aurally, the signs coincide in the letters and the sequence of sounds ‘REDROCK’, present identically in both signs. However, they differ in the third verbal element, ‘Direct’, placed at the end of the contested sign, which has no counterpart in the earlier mark, although, as outlined above, it will be perceived as a weak element. In this regard, 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 visually and aurally similar to a high degree.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the earlier mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are identical and they target the general public and a professional public, whose degree of attention may vary from average to high. Furthermore, the earlier mark has a normal degree of distinctiveness.

In addition, the marks under comparison are visually, aurally and conceptually highly similar to the extent that the earlier trade mark is wholly included at the beginning of the contested sign and the additional element of the contested sign is a weak element.

It is likely that, on encountering the use of both signs for identical goods, consumers, even those who display a high degree of attention, will believe that they originate from the same undertaking or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates, for example by adding the element ‘Direct’ (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Furthermore, 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 English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 831 229. It follows that the contested trade mark must be rejected for all the 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(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

Eva Inés PÉREZ SANTONJA

Carlos MATEO PEREZ

Klaudia MISZTAL

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.