OPPOSITION No B 2 945 106

Bridgestone Corporation, 1-1, Kyobashi 3-chome, Chuo-ku, 104-8340, Tokyo, Japan (opponent), represented by Marks & Clerk LLP, 90 Long Acre, WC2E 9RA London, United Kingdom (professional representative)

a g a i n s t

Jian Gui Zhao, Room 203 Bldg.7 Jianyuan South Garden Jianyuan Road 56 Xiangcheng District, 363000, Zhangzhou City Fujian Province, People’s Republic of China (applicant), represented by Metida Law Firm Žabolienė and Partners, Business center Vertas Gynéjų str. 16 01109 Vilnius, Lithuania (professional representative).

On 02/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 945 106 is partially upheld, namely for the following contested goods:

Class 12: Electric vehicles; remote control vehicles, other than toys; vehicles for locomotion by land, air or rail; air vehicles; vehicle wheel tires [tyres]; aircraft; aeroplanes; safety seats for children, for vehicles; baby carriages; pushchairs.

2. European Union trade mark application No 16 707 903 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 707 903 for the figurative mark ‘ ’. The opposition is based on European Union trade mark registration No 13 316 161 for the word mark ‘STONE’, European Union trade mark registration No 3 574 274 for the word mark ‘BRIDGESTONE’ and international trade mark registration No 1 105 946 designating the European Union for the figurative mark ‘ . The opponent invoked Article 8(1)(b) as regards all the three rights on which the opposition is based and Article 8(5) EUTMR only in relation to European Union trade mark registration No 3 574 274 for the word mark ‘BRIDGESTONE’ and international trade mark registration No 1 105 946.

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 and services

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first compare the goods of the opponent’s European Union trade mark registration No 13 316 161 for the word mark ‘STONE’.

European Union trade mark registration No 13 316 161

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

Class 12: Automobiles and their parts and fittings; tires; retreaded tires; two-wheeled motor vehicles and their parts and fittings; bicycles and their parts and fittings; electric bicycles and their parts and fittings; aircrafts and their parts and fittings.

The contested goods are the following:

Class 12: Electric vehicles; remote control vehicles, other than toys; vehicles for locomotion by land, air, water or rail; aerial conveyors; air vehicles; vehicle wheel tires [tyres]; aircraft; aeroplanes; safety seats for children, for vehicles; baby carriages; pushchairs; boats; water vehicles; yachts; sleighs [vehicles].

Class 15: Electronic organs; harmonicas; guitars; electronic musical instruments; musical boxes; violins; conductors' batons; piano keyboards; piano strings; piano keys.

Class 28: Ascenders (mountaineering equipment); snowboards; swimming belts; swings; toy cars; building blocks [toys]; building games; scale model vehicles; spinning tops [toys]; toy vehicles; radio-controlled toy vehicles; skis; teddy bears; plush toys; chessboards; toy airplanes; drones [toys].

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 12

The contested vehicles for locomotion by land include, as a broader category the earlier automobiles. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested electric vehicles; remote control vehicles, other than toys overlap with the earlier automobiles. Therefore, they are identical.

Vehicle wheel tires [tyres]; vehicles for locomotion by air; air vehicles; aircraft are identically contained in both lists of goods (including synonyms).

The contested aeroplanes are included in the broad category of the earlier aircrafts. Therefore, they are identical.

The contested baby carriages; pushchairs are similar to the earlier bicycles because they coincide in purpose, distribution channels, relevant public and also in their origin.

The contested vehicles for locomotion by rail are similar to the earlier tires because they share distribution channels and relevant public. Also, these goods are complementary, since, for instance, steam locomotives have steel wheels usually fitted with a steel tire.

The contested safety seats for children, for vehicles are similar to the opponent’s automobiles because they share the same distribution channels, relevant public and producers. Furthermore, they are complementary.

The contested vehicles for locomotion by water; aerial conveyors; boats; water vehicles; yachts; sleighs [vehicles] are dissimilar to all the goods and services covered by the earlier trade mark. This is because they have nothing in common. They are of a different nature. Also, they do not share the same distribution channels, they do not target the same end user and they are produced by different companies. Neither are they complementary or in competition.

Contested goods in Class 15

The contested electronic organs; harmonicas; guitars; electronic musical instruments; musical boxes; violins; conductors' batons; piano keyboards; piano strings; piano keys are dissimilar to all the goods and services covered by the earlier trade mark. These goods share no point of contact. They have radically different nature and purpose. Also, they do not share the same distribution channels, they do not target the same end user and they are produced by different companies. Neither are they complementary or in competition.

Contested goods in Class 28

The same reasoning applied for the previous Class is valid for the contested goods in Class 28, namely ascenders (mountaineering equipment); snowboards; swimming belts; swings; toy cars; building blocks [toys]; building games; scale model vehicles; spinning tops [toys]; toy vehicles; radio-controlled toy vehicles; skis; teddy bears; plush toys; chessboards; toy airplanes; drones [toys]. These goods and the opponent’s goods in Class 12 are all dissimilar. In fact, these goods share no point of contact. They have different nature and purpose. Also, they do not share the same distribution channels, they do not target the same end user and they are produced by different companies. Neither are they complementary or in competition.

The Opposition Division will now compare the contested goods with the goods and services of the opponent’s European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946 designating the European Union.

European Union trade mark registration No 3 574 274

Class 7: Machines and machinery; construction machines and apparatus; cargo handling machines and apparatus; lifting and hoisting apparatus; handling apparatus for loading and unloading; loading ramps; anti-friction pads for machines; conveyors; conveyor belts; pulleys; braking apparatus; mechanical switches; tracks; parts and fittings for all the aforesaid goods.

Class 9: Measuring apparatus and instruments; apparatus and instruments for electrical distribution or control; electrical and electronic apparatus and instruments; cabling; switches and switch mechanisms; parts and fittings for all the aforesaid goods.

Class 12: Vehicles and parts and fittings for vehicles; apparatus for vehicles and tyres; treads for vehicles; brake pads and brake linings; tracks for vehicles; rubber goods for vehicles and tyres; tyres; wheels for vehicles; inner tubes, rims and covers for vehicle wheels; inner tubes for vehicle tyres; repair materials of rubber for tyres and inner tubes; repair outfits for tyres; non-skid apparatus and devices for vehicle tyres; golf carts and golf trolleys; non-metallic hoses for use in hydraulic systems in vehicles; fenders for ships; parts and fittings for all the aforesaid goods.

Class 17: Rubber and goods made from rubber; semi-finished rubber and articles made therefrom; packaging, padding and packing materials made of rubber; packaging containers of rubber; insulating material; plastics in extruded form for use in manufacture, plastic semi-products; pipes; hoses made of rubber; oil centres (floating anti-pollution barriers).

Class 25: Clothing, footwear and headgear; gloves; caps, hats, visors.

Class 28: Toys, models toys; sports and sporting equipment, articles and accessories; apparatus for use in golfing; golfing club heads, golfing club head covers; golf club bags; trolley bags for golf equipment; golf clubs; golf irons; golf putters; golf gloves; sports bags shaped to contain specific sports apparatus; balls, grips and shafts; parts and fittings for the aforesaid goods.

Class 37: Repair, replacement and maintenance of motor vehicles and parts and fittings therefor; provision of advice and information relating to the aforesaid services.

Class 41: Entertainment services; provision of racing news on-line; driving instruction.

Class 42: Provision of technical advice and information relating to the manufacture and use of tyres and parts and fittings therefor; provision of technical advice and information relating to rubber products.

International trade mark registration No 1 105 946 

Class 1: Rubber cement for use in retreading preformed tires; solvents; self-vulcanizing binder compositions and vulcanizing accelerator compositions all used in the repair of tires.

Class 6: Metal junctions for pipes; metal flanges; water-pipe valves of metal; pipework of metal; antiseismic construction materials of metal; construction materials of metal; reinforcing materials of metal for building; metal hardware; reinforcing materials of metal for pipes; nuts of metal; industrial water storage tanks (of metal); water tanks of metal for household purposes; steel buildings; stainless-steel water tank; containers of metal; rubber covered metal chains for preventing bridge collapse; man-made garden ponds (metal structures).

Class 7: Construction machines and apparatus; loading-unloading machines and apparatus; rubber tracks for use with crawlers on agricultural machinery; rubber tracks for use with crawlers on mining machinery; rubber tracks for use with crawlers on construction, cargo handling machinery; rubber pads to be attached to shoe plates of metal crawlers; rubber tracks machinery; rubber tracks for use with crawlers on construction, cargo handling machinery; rubber pads to be attached to shoe plates of metal crawlers; rubber tracks for use with crawlers on snow remover; parts and fittings for all the aforesaid goods; belts for conveyors; transmission belts not for land vehicles; belt conveyers; brakes for machines; hydraulic hoses, not of metal, for use in machines; non-metallic hoses for transferring hydraulic power in machines; non-metallic hoses for use in hydraulic systems in machines; hydraulic quick release couplings for high pressure hoses used in machines; plastics pipes (fitted parts of machines); hydraulic connectors (pipes) being parts of machines; tire repairing machinery; pressure chambers as parts of tire repairing machinery; tire buffers as parts of tire repairing machinery; tire tread rollers and stitchers, as parts of tire repairing machinery; tire tread cutters and bonding agent applicators used in recapping tires as parts of tire repairing machinery; pneumatic shock absorbers (air springs, for machine elements not for land vehicles); rubber springs for non-vehicular suspension systems.

Class 9: Phase indicators; rubber covered electrical wires; electronic buzzers; solar batteries; facsimiles; electronic displays utilizing electronic paper technology; computers; rollers such as transfer roller, toner supply roller, development roller, etc. for printer, facsimile, copy machine; alarm devices for tire pressure; pressure gauges in vehicle tires; rubber testing machines; cameras; magnetic cores; gasoline gauges; gasoline pumps for service stations; cigar lighter for automobiles; protective masks; apparatus for consumer games adapted for use with an external display screen or monitor; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; weight belts for scuba diving; downloadable music files; downloadable image files; electronic publications; batteries, electric; batteries electric for vehicles; sunglasses.

Class 12: Automobiles and their parts and fittings; tires for passenger cars; tires for trucks; tires for buses; tires for racing cars; tires for automobiles; retreaded tires for passenger cars; retreaded tires for trucks; retreaded tires for buses; retreaded tires for racing cars; retreaded tires; retreaded tires for automobiles; inner tubes for passenger cars; inner tubes for trucks; inner tubes for buses; inner tubes for racing cars; inner tubes for automobiles; wheels and rims for passenger cars; wheels and rims for trucks; wheels and rims for buses; wheels and rims for racing cars; wheels and rims for automobiles; tread rubber for retreading tires for the above-mentioned vehicles; two-wheeled motor vehicles and their parts and fittings; tires for two-wheeled motor vehicles; inner tubes for two-wheeled motor vehicles; wheels and rims for two-wheeled motor vehicles; bicycles and their parts and fittings; tires for bicycles; inner tubes for bicycles; wheels and rims for bicycles; aircraft and their parts and fittings; tires and inner tubes for aircraft; adhesive rubber patches for repairing tubes or tires; tread rubber for retreading tires for two-wheeled motor vehicles or bicycles; tread rubber for retreading tires for aircraft; tread used to retread tires; preformed tire tread; rubber patches for repairing vehicle tread; shock absorbers (for land vehicles); air springs for land vehicles; shaft couplings or connectors (for land vehicles); fenders for vessels (boat side protectors); seat cushions for vehicles; air springs for railway cars; vehicle bumpers; suspension shock absorbers for vehicles; suspension springs for vehicles; four-wheeled go-carts; tricycles for infants; tires for off-the-road vehicles; tires for scrapers; tires for motor graders; tires for shovel loaders; tires for tire rollers; tires for wheeled cranes; tires for cranes; tires for snow plows; tires for pavers; tires for mining machinery.

Class 17: Valves of rubber or vulcanized fiber; flexible tubes not of metal; junction for pipes, not of metal; sealants for use in building and construction and insulation for use in building and construction; floating anti-pollution barriers; packing containers of rubber; hydraulic hoses, not of metal; plastic substances, semi-processed; plastic sheets for use as interlayers for laminated glass; plastic films, not for wrapping; EVA (ethylene vinyl acetate) films for solar batteries; EVA (ethylene vinyl acetate) films for solar cells; urethane foam; thermoplastic elastomers used as materials for buffers of HDD; flexible pipes and tubes of plastic; flexible rubber tubes; laminated plastic films for use in electronic displays including plasma display panels and liquid crystal displays; adhesive-coated plastic sheets for solar cells; rubber; materials of rubber for seismic isolation; synthetic rubber; natural rubber; rubber compounds; rubber for retreading and repairing tires and repairing tubes; rubber material for recapping tires; gaskets; seals; waterproof membranes; gaskets of metal.

Class 18: Shopping bags; bags for sports; rucksacks; travelling bags; handbags; wheeled shopping bags; net bags for shopping; purses; school bags; bags (envelopes, pouches) of leather for packaging; umbrellas; parasols; card cases; key cases leatherware; vanity cases not fitted.

Class 19: Rigid pipes, not of metal (building); rubber building or construction materials; antiseismic construction materials, not of metal; rubber building materials for seismic isolation; non-metallic building materials; roofing and roofing waterproof membranes; non-metal bridge construction materials, covered with rubber; man-made garden ponds (structures, not of metal).

Class 20: Valves, not of metal, other than parts of machines; tanks, not of metal nor of masonry; liquid storage tanks not of metal nor of masonry; gas storage tanks not of metal nor masonry; chests, not of metal; desks; chairs; mirrors; bathroom vanities (furniture); bookcases; cushions; pillows; mattresses; cases of wood; bamboo and plastic containers for packaging; fans for personal use, non-electric; water tanks for household purposes not of metal nor masonry; sleeping bags for camping; hairdresser's chairs; non-metal chains covered with rubber.

Class 24: Towels of textile; handkerchiefs; labels (cloth). 

Class 25: Wind jackets; wristbands; golf shoes; golf spikes; cyclist's suits of jerseys for racing; cyclist's pants for racing; cyclist's overall; golf trousers; golf caps; golf shirts; golf pants; golf skirts; jackets; jogging pants; sweat pants; trousers; overcoats; raincoats; sweaters; sport shirts; camisoles; undershirts; underpants; vests; open-necked shirts; polo shirts; collar protectors; socks; scarfs; gloves; gloves for bicycling; neckerchieves; thermal underwear; mufflers; ear muffs; hats; caps (clothing); visors; sports shoes; walking shoes; shoes; gloves for bicycle racing; gloves for cycling. 

Class 28: Miniature cars; rubber balls; model vehicles; golf clubs; golf bags; golf balls; golf gloves; golf club heads; golf club head covers; golf irons; golf putters; golf equipment; sports bags shaped to contain specific sports apparatus; tennis rackets; tennis balls. 

Class 35: Retail services or wholesale services for automobiles, tires and parts and fittings for automobiles; retail services or wholesale services for sports goods; retail services or wholesale services for bicycles and parts and fittings for bicycles. 

Class 37: Repair and maintenance of automobiles and their parts; repair and maintenance of tires for automobiles; retreading of tires; repair and maintenance of two-wheeled motor vehicles and their parts; repair and maintenance of tires for two-wheeled motor vehicles; repair and maintenance of bicycles and their parts; repair and maintenance of tires for bicycles; repair and maintenance of tires for aircraft; tire repair and recapping services; roofing services; roof repair; roof installation, and maintenance. 

Contested goods in Class 12

Vehicle wheel tires [tyres] are also covered by earlier European Union trade mark registration No 3 574 274. Thus, these goods are identical.

The contested electric vehicles; remote control vehicles, other than toys; vehicles for locomotion by land, air, water or rail; aerial conveyors; air vehicles; aircraft; aeroplanes; baby carriages; pushchairs; boats; water vehicles; yachts; sleighs [vehicles] are included in the broad category of vehicles covered by European Union trade mark registration No 3 574 274. Therefore, they are identical.

The contested safety seats for children, for vehicles are related to the opponent’s vehicles covered by European Union trade mark registration No 3 574 274. This is because they share the same distribution channels, relevant public and producers. Furthermore, they are complementary. Consequently, these goods must be considered similar.

Contested goods in Class 15

The contested electronic organs; harmonicas; guitars; electronic musical instruments; musical boxes; violins; conductors' batons; piano keyboards; piano strings; piano keys are dissimilar to all the goods and services covered by the earlier trade marks. These goods share no point of contact. They have radically different nature and purpose. Also, they do not share the same distribution channels, they do not target the same end user and they are produced by different companies. Neither are they complementary or in competition.

Contested goods in Class 28

The contested swings; toy cars; building blocks [toys]; building games; scale model vehicles; spinning tops [toys]; toy vehicles; radio-controlled toy vehicles; teddy bears; plush toys; chessboards; toy airplanes; drones [toys] are included in the broad category of the toys covered by European Union trade mark registration No 3 574 274. Therefore, they are identical.

The contested ascenders (mountaineering equipment); snowboards; swimming belts; skis are included in the broad category of sports and sporting equipment covered by European Union trade mark registration No 3 574 274. Thus, they are identical.

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 in Class 28 are directed at the public at large while the goods in Class 12 are directed at the public at large and also at business customers with specific professional knowledge or expertise.

The degree of attention is expected to be average for what concerns the goods in Class 28. However, as concerns the goods in Class 12 account must be taken of the fact that the public’s degree of attentiveness may vary from average to high, depending on the price, the specialised nature of the goods, or terms and conditions of the purchased goods and services.

In particular, taking into consideration the price of vehicle or some parts and accessories of, for instance, cars, and also considering that safety when driving might be of some concern in relation to some of the goods, consumers are likely to pay a higher degree of attention than for less expensive purchases.

3. The signs

STONE (EUTM 13 316 161) BRIDGESTONE (EUTM 3 574 274) (international trade mark registration No 1 105 946)
Earlier trade marks	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 European Union trade mark registration No 13 316 161 is a word mark consisting of the word ‘STONE’. The earlier European Union trade mark registration No 3 574 274 is a word mark consisting of the word ‘BRIDGESTONE’. The earlier international trade mark registration No 1 105 946 designating the European Union is a figurative mark consisting of the word ‘BRIDGESTONE’ depicted in fanciful capital black characters.

The contested sign is a figurative sign consisting of the words ‘Holy Stone’ depicted using ordinary black letters, being the first letters capital letter, the remaining lower case letters.

For a part of the public, as for instance for the English-speaking consumers, the signs have a meaning, since they will recognize the words ‘STONE’ per se and within the word ‘BRIDGESTONE’ (‘a piece of rock or hard mineral substance’), but also the word ‘Holy’ (as, inter alia, dedicated or consecrated to God or a religious purpose; sacred) and ‘BRIDGE’ (as, inter alia, ‘a structure carrying a road, path or railway’).

For another part of the relevant public, such as the Spanish-, Italian- and Polish-speaking consumers, the signs have no meaning and are, therefore, distinctive.

As the elements of the signs have no meaning for the relevant public for the relevant goods or they are not descriptive, allusive or otherwise weak for the relevant goods and services, they are all distinctive.

The earlier international trade mark registration No 1 105 946 designating the European Union and the contested sign have no elements that could be considered clearly more dominant than other elements.

Also, in particular as regards earlier European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946, account must be taken on the fact that consumers generally tend to focus on the beginning of a sign, which in this case might be the word or letters ‘BRIDGE’, 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.

Visually, the earlier European Union trade mark registration No 13 316 161 and the contested sign coincide in the distinctive element ‘Stone’. However, they differ in the additional and distinctive word ‘Holy’ of the contested sign. Therefore, these signs are deemed to be visually similar to an average degree.

As regards the earlier European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946 designating the European Union, they coincide with the contested sign to the extent that they share the letters ‘STONE’, although in the case of the earlier international trade mark registration No 1 105 946 depicted in a different manner. In view of the fact that these signs also differ in the first letters ‘BRIDGE-‘ of the earlier signs, in the graphic arrangement of the earlier international trade mark registration and in the additional word ‘Holy’ of the contested sign, they are deemed to be visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier European Union trade mark registration No. 13 316 161 and the contested sign coincide in the pronunciation of distinctive element ‘STONE’. However, they differ in the pronunciation of the additional and distinctive word ‘Holy’ of the contested sign. Therefore, these signs are deemed to be aurally similar to an average degree.

As regards the earlier European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946 designating the European Union, they share the letters ‘STONE’ with the contested sign. In view of the fact that these signs also differ in the pronunciation of the first letters ‘BRIDGE-‘ of the earlier signs and in the additional word ‘Holy’ of the contested sign, they are deemed to be aurally similar to a low degree.

Conceptually, account must be taken on the fact that signs are conceptually identical or similar when the two signs are understood as meaning the same thing or something similar, respectively. In this case, the signs are conceptually similar to an average degree for English-speaking consumers to the extent that they share the concept of ‘stone’. The same part of the relevant public will perceive a conceptual dissimilarity between the signs with regard to the word ‘BRIDGE’ of the earlier mark and ‘Holy’ in the contested sign. For another part of the relevant public who does not speak English, the signs will not evoke any meaning and therefore, for those consumers, a conceptual comparison does not influence the assessment of 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 marks

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 European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946 designating the European Union have a reputation in the European Union in connection with all the goods and services for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of, inter alia, the following documents:

• Annex 3: Witness statement signed in Tokyo, Japan, on 23/02/2018 by the opponent’s General Manager of Intellectual Property Department.

• Annex 4 (Exhibit MM1): Copy of Bridgestone Europe’s 2013 Corporate Brochure, Press articles relating to “air-free” bicycle tyres in English, Spanish, Finnish, German, Italian and Spanish.

• Annex 5 (Exhibit MM2): Website printouts taken from European magazine and news media containing brochures showing car, motorcycle, industrial and agricultural tyre ranges.

• Annex 6 (Exhibit MM3): European Union sales figures for ‘BRIDGESTONE’ tyre products’ for the period comprised between the years 2013 and 2016.

• Annex 7 (Exhibit MM3A): Market share data relating to all the European Union countries in relation to different types of tyres in years comprised between 2012 and 2017.

• Annex 8 (Exhibit MM4): Website printouts showing availability of BRIDGESTONE branded products, namely tyres, through third party distributors and retailers in the European Union U, including Kwik Fit, Norauto and ATU.

• Annex 9 (Exhibit MM4A): Extract from an independent report on the European Automotive Aftercare Market commissioned by the European Automobile Manufacturers Association (ACEA) in 2011, in which no mention of ‘BRIDGESTONE’ is made together with extracts from the opponent’s website showing locations in the European Union where it is possible to purchase tyres.

• Annex 10 (Exhibit MM5): Information on Bridgestone affiliate company Bridgestone Licensing Services, LLC and Firestone brand.

• Annex 11 (Exhibit MM6): Information on Bridgestone affiliate company and brand Bridgestone Bandag.

• Annex 12 (Exhibit MM7): Information on Bridgestone affiliate company Bridgestone Cycle Co. Ltd and website printouts showing bicycle ranges.

• Annex 13 (Exhibit MM8): Pages containing data about the marketing and advertising expenditure figures for all the European countries for the years comprised between 2012 and 2017.

• Annex 14 (Exhibit MM9): Press articles from the European Union containing information about ‘BRIDGESTONE’ tyres.

• Annex 15 (Exhibit MM10): Press releases dated regarding Motor Shows in, inter alia, France and Germany, in the years 2014 and 2015 containing information about ‘BRIDGESTONE’ tyres.

• Annex 16 (Exhibit MM11): Impact studies prepared by independent Media agency called Road Transport Media which are designed to assess the impact of trade press advertising.

• Annex 17 (Exhibit MM12): Posters, advertisements and other promotional material directed at European Union customers containing information about ‘BRIDGESTONE’ tyres and also the depiction of the figurative sign .

• Annex 18 (Exhibit MM13): YouTube advertisements and information on sponsorship of the United Kingdom’s Channel Four television station’s Weather News.

• Annex 19 (Exhibit MM14): Website extracts showing official social media accounts and use of the BRIDGESTONE ‘hashtag’.

• Annex 20 (Exhibit MM15): Website printouts regarding Formula One sponsorship and association.

• Annex 21 (Exhibit MM16): Website printouts showing general sports sponsorships, including of the National Football League, FIS Alpine Ski World Cup and British Schoolboy Motorcycle Association.

• Annex 22 (Exhibit MM17): Website printouts showing Olympic Games association of the ‘BRIDGESTONE’ brand.

• Annex 23-24 (Exhibit MM18-19): Website printouts regarding collaboration with important European car producers.

• Annex 25 (Exhibit MM20): Website printouts regarding awards received in several countries of the European Union.

As already mentioned, the evidence submitted by the opponent has been listed only in the most general terms without divulging any such data.

The Court has given some guidance in respect of the evaluation of distinctiveness acquired through use of the earlier mark and provided a non-exhaustive list of factors:

In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking. and statements from chambers of commerce and industry or other trade and professional associations.

(Judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

The evidence of enhanced distinctiveness acquired through use must refer to both (i) the relevant geographical area and (ii) the relevant goods and services. According to the evidence submitted, the Office must establish precisely for which goods and services distinctiveness has been acquired. The nature, factors, evidence and assessment of enhanced distinctiveness are the same as for reputation.

Having examined the material listed above, the Opposition Division concludes that the earlier trade marks have acquired a high degree of distinctiveness through their use on the market of the whole European Union.

However, this conclusion is not valid for all the goods and services covered by European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946 designating the European Union.

Where the earlier marks are registered for a wide range of goods and services targeting different kinds of public, it will be necessary to assess reputation separately for each category of goods and services. In such cases the earlier mark may not have a reputation for all of them, as it may not have been used at all for some of the goods, whereas for others it may not have reached the degree of knowledge necessary for the application of Article 8(5) EUTMR.

In the present case, the only goods for which consistent data have been furnished, in particular regarding the sales figures, the advertising expenditure and the market share are tyres in Class 12, including car tyres, trucks tyres and motorcycles tyres.

The evidence shows that the earlier marks enjoy a partial reputation, that is, the reputation only covers some of the goods or services for which it is registered. Consequently, it is only some of the goods in Class 12 that are considered to enjoy enhanced distinctiveness and will be taken into account for the purposes of the examination, namely the following: tyres covered by European Union trade mark registration No 3 574 274 and tyres for passenger cars; tyres for trucks/lorries; tyres for automobiles covered by international trade mark registration No 1 105 946 designating the European Union.

5. Global assessment, other arguments and conclusion

For reasons of procedural economy, the Opposition Division will firstly draw a conclusion from the perspective of European Union trade mark registration No 13 316 161 for the word mark ‘STONE’. In this case, the goods covered by this earlier right and the goods covered by the contested application have been found partly identical, partly similar and partly dissimilar. The signs are similar to an average degree both from a visual and aural perspective, and from a conceptual perspective, for a part of the public, to an average degree as well. The earlier mark ‘STONE’ is fully incorporated within the contested sign ‘Holy Stone’.

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).

Also, 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).

As the goods in Class 12 are identical and similar and due to the absence of any dominant or non‑distinctive elements in the signs, a likelihood of confusion exists.

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark ‘STONE’, 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).

Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 316 161.

It follows from the above that the contested trade sign must be rejected for the goods found to be identical or similar to those of the earlier European Union trade mark registration No 13 316 161, namely the following:

Class 12: Electric vehicles; remote control vehicles, other than toys; vehicles for locomotion by land, air or rail; air vehicles; vehicle wheel tires [tyres]; aircraft; aeroplanes; safety seats for children, for vehicles; baby carriages; pushchairs.

The rest of the contested goods, namely vehicles for locomotion by water; aerial conveyors; boats; water vehicles; yachts; sleighs [vehicles] in Class 12, electronic organs; harmonicas; guitars; electronic musical instruments; musical boxes; violins; conductors' batons; piano keyboards; piano strings; piano keys in Class 15, ascenders (mountaineering equipment); snowboards; swimming belts; swings; toy cars; building blocks [toys]; building games; scale model vehicles; spinning tops [toys]; toy vehicles; radio-controlled toy vehicles; skis; teddy bears; plush toys; chessboards; toy airplanes; drones [toys] in Class 28 are dissimilar to the goods covered by European Union trade mark registration No 13 316 161. 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 cannot be successful.

However, as seen above in section a) of the present decision, some the contested goods in Classes 12 and 28 have been found identical to some of the goods covered by earlier European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946 designating the European Union. Accordingly, an assessment must be also given insofar as the opposition is also based on these earlier rights.

As regards these earlier marks, account must be taken that they have been found visually and aurally similar to the contested sign only to a low degree. It is true that there is, at least from the perspective of the English-speaking consumers, a conceptually link due to the presence of the recognisable word ‘Stone’. Though, regarding these signs now taken into account, the difference in the first elements ‘BRIDGE-’ and ‘Holy’ is clearly noticeable. The beginning of a sign can make a significant difference to the consumer’s perception of it. In the present case, the elements ‘BRIDGE’ and ‘Holy’ effectively constitute the first half of the marks. They are not merely common banal prefixes attached to the front of long, elaborate marks.

These elements of the signs will not escape the attention of the consumer. The marks are simple ones and the first parts of the signs are not camouflaged in any way by the overall complexity or length of the signs. Bearing that in mind and the fact that these two elements, ‘BRIDGE-’ and ‘Holy’, have no point of connection, visually, aurally or conceptually, the conclusion is that the consumer will have no difficulty distinguishing between the marks in question. As seen above, the marks are linguistically related, due to the word ‘STONE’, which they have in common, but taken as a whole they are not close relatives.

Account must be also taken of the fact that the European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946 designating the European Union enjoy partial enhanced distinctiveness, namely for the following goods: tyres covered by European Union trade mark registration No 3 574 274 and tires for passenger cars; tires for trucks; tires for automobiles covered by international trade mark registration No 1 105 946 designating the European Union. However, these goods are clearly dissimilar to the rest of the contested goods, namely vehicles for locomotion by water; aerial conveyors; boats; water vehicles; yachts; sleighs [vehicles] in Class 12, electronic organs; harmonicas; guitars; electronic musical instruments; musical boxes; violins; conductors' batons; piano keyboards; piano strings; piano keys in Class 15, ascenders (mountaineering equipment); snowboards; swimming belts; swings; toy cars; building blocks [toys]; building games; scale model vehicles; spinning tops [toys]; toy vehicles; radio-controlled toy vehicles; skis; teddy bears; plush toys; chessboards; toy airplanes; drones [toys] in Class 28, since they do not share any point of contact. In fact, these goods have different nature and purpose. Also, they do not share the same distribution channels, they do not target the same end user and they are produced by different companies. Neither are they complementary or in competition.

Therefore, taking into account all the relevant circumstances of the case when comparing earlier European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946 designating the European Union, as well as the principle of interdependence between the various relevant factors, the Opposition Division concludes that the visual and aural differences between the beginnings of the marks at issue are striking enough that they will enable the targeted public in the European Union to avoid a likelihood of confusion, including a likelihood of association.

Considering all of the above, the Office finds that there is no likelihood of confusion within the meaning of Article 8(1)(b) CTMR on the part of the public. Therefore, the opposition must be rejected insofar as it is based on this ground and on European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946 designating the European Union.

The Opposition Division will then examine the opposition insofar as it based on the opponent’s European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946 designating the European Union under Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

3. The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are visually and aurally similar to a low degree and conceptually similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

While the relevant section of the public for the goods or services covered by the conflicting marks is the same or overlaps to some extent, those goods or services are so different that the later mark is unlikely to bring the earlier marks to the mind of the relevant public.

The goods for which the earlier marks enjoy reputation are tyres in Class 12 covered by European Union trade mark registration No 3 574 274 and tyres for passenger cars; tyres for trucks/lorries; tyres for automobiles in Class 12 covered by international trade mark registration No 1 105 946 designating the European Union.

The remaining goods covered by the European Union trade mark application are the following:

Class 12: Vehicles for locomotion by water; aerial conveyors; boats; water vehicles; yachts; sleighs [vehicles].

Class 15: Electronic organs; harmonicas; guitars; electronic musical instruments; musical boxes; violins; conductors' batons; piano keyboards; piano strings; piano keys.

Class 28: Ascenders (mountaineering equipment); snowboards; swimming belts; swings; toy cars; building blocks [toys]; building games; scale model vehicles; spinning tops [toys]; toy vehicles; radio-controlled toy vehicles; skis; teddy bears; plush toys; chessboards; toy airplanes; drones [toys].

These goods are radically dissimilar. As regards the goods in Class 12, namely vehicles for locomotion by water; aerial conveyors; boats; water vehicles; yachts; sleighs [vehicles], they are all goods that by definition do not require tyres. The goods in Class 15 are all musical instruments, which also have no point of contact with tyres. As regards some of the goods in Class 28, such as scale model vehicles and radio-controlled toy vehicles, it true that they can have wheels and consequently tyres, among their components, but they are the component of toys on a miniature scale, not of real vehicles on a normal scale.

The nature of all these goods is different. As regards the goods in Class 12, they are vehicle, not components of vehicle which by definition are replaceable goods. Neither have these goods the same purpose. Furthermore, it can safely be excluded any degree of complementarity, since the goods in Class 12 have not wheels, and consequently do not require tyres.

In addition, what makes not plausible that the public would be reminded of the earlier marks when purchasing the contested goods bearing the contested mark is the existence of extremely divergent distribution channels.

Also, as seen above, the degree of similarity between the signs has been found only low.

Therefore, taking into account and weighing up all the relevant factors of the present case, inter alia, the strong dissimilarity between the goods and the low degree of visual and aural similarity between the signs, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected also insofar as it based on this ground in relation to the following goods:

Class 12: Vehicles for locomotion by water; aerial conveyors; boats; water vehicles; yachts; sleighs [vehicles]

Class 15: Electronic organs; harmonicas; guitars; electronic musical instruments; musical boxes; violins; conductors' batons; piano keyboards; piano strings; piano keys.

Class 28: Ascenders (mountaineering equipment); snowboards; swimming belts; swings; toy cars; building blocks [toys]; building games; scale model vehicles; spinning tops [toys]; toy vehicles; radio-controlled toy vehicles; skis; teddy bears; plush toys; chessboards; toy airplanes; drones [toys].

For the sake of completeness, it must be noted that on this issue the opponent has not submitted any argument. In its observations of 28/02/2018 the opponent has only pointed out that the […] goods are for the most part unquestionably identical and highly similar […] without providing any line of arguments or observation whatsoever in regard to dissimilar goods.

As a rule, general allegations (such as merely citing the relevant EUTMR wording) of detriment or unfair advantage will not be sufficient in themselves for proving potential detriment or unfair advantage: the opponent must adduce evidence and/or develop a cogent line of argument to demonstrate specifically how, taking into account both marks, the goods and services in question and all the relevant circumstances, the alleged injury might occur. Merely showing the reputation and good image of the earlier marks, without further substantiation by way of evidence and/or reasoning is not sufficient (decision of 15/02/2012, R 2559/2010-1, GALLO / GALLO (fig.) et al., § 38-39, and the Court case-law cited therein).

The proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. When it is foreseeable that such injury would ensue from the use that might be made of the EUTM application, the proprietor of the earlier mark is not required to wait for it actually to occur in order to be able to prohibit registration of the EUTM application. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future (judgments of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 38; 07/12/2010, T-59/08, Nimei La Perla Modern Classic, EU:T:2010:500, § 33; 29/03/2012, T-369/10, Beatle, EU:T:2012:177, § 61 (appeal dismissed in judgment of 14/05/2013, C-294/12 P, Beatle, EU:C:2013:300); 06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53; 25/01/2012, T-332/10, Viaguara, EU:T:2012:26, § 25).

Such a finding may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (judgments of 10/05/2007, T-47/06, Nasdaq, EU:T:2007:131, § 54, upheld on appeal (judgment of 12/03/2009, C-320/07 P, Nasdaq, EU:C:2009:146); 16/04/2008, T-181/05, Citi, EU:T:2008:112, § 78; 14/11/2013, C-383/12 P, Répresentation d’une tête de loup, EU:C:2013:741, § 42-43).

The opponent did not demonstrate the existence of a special connection between the goods, which would allow for some of the qualities of the opponent’s goods to be attributed to the goods of the applicant.

As already mentioned, in the present case, apart from claiming a reputation and arguing that the goods are identical or highly similar, that signs are similar and that consumers will establish a link between the trade marks because of the similarities between them, the opponent did not submit any additional facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark in particular as regards the goods that have been found dissimilar.

The opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Article 7(2)(f) EUTMDR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

Therefore, a fortiori, the opposition is not well founded under 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. 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María Clara IBAÑEZ FIORILLO

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

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.