OPPOSITION No B 3 045 583

Sopartex, 119 Avenue Louis Roche, 92230, Gennevilliers, France (opponent), represented by Cabinet @Mark, 16, rue Milton, 75009 Paris, France (professional representative)

a g a i n s t

Corven S.A.C.I.F., Calle Roberto Imperiale 1190 (2600), Parque Ind. La Victoria, Venado Tuerto (Santa Fe), Argentina (applicant), represented by Esquivel & Martin Santos European Patent and Trade Mark Attorneys, Calle de Velázquez, 3 - piso 3, 28001 Madrid, Spain (professional representative).

On 28/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 045 583 is upheld for all the contested goods.

2. European Union trade mark application No 17 088 923 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 088 923 for the word mark ‘LIP SUPRA’. The opposition is based on French trade mark registration No 4 039 888 for the word mark ‘SUPRA’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods

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

Class 7: Shock absorber plungers [parts of machines]; hydraulic and pneumatic controls for machine tools; couplings and transmission components (except those for land vehicles); transmission shafts other than for land vehicles; joints [parts of engines].

Class 12: Vehicles; apparatus for locomotion by land, air or water; driving chains and driving devices for land vehicles; clutches for land vehicles; brakes for vehicles; brake linings, brake shoes and brake segments for vehicles; cycles and bicycle brakes; transmissions and transmission components for land vehicles; transmission shafts for land vehicles; couplings for land vehicles; hydraulic circuits for vehicles; axles for vehicles; suspension shock absorbers for vehicles; shock absorbing springs and suspension springs for vehicles; connecting rods for land vehicles, other than parts of motors and engines; bumpers for vehicles.

The contested goods are the following:

Class 12: Absorbers; hydraulic telescopic dampers; disc brakes; brake linings; suspension parts for vehicles, namely ball joints, end and axial; control arms for vehicles; clutches for land vehicles; steering boxes for vehicles; housings for vehicle shock absorbers; homokinetic joints; vehicle half shafts; bushes for vehicles and vehicle shock absorbers.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

The contested absorbers; hydraulic telescopic dampers; disc brakes; brake linings; suspension parts for vehicles, namely ball joints, end and axial; control arms for vehicles; clutches for land vehicles; steering boxes for vehicles; housings for vehicle shock absorbers; homokinetic joints; vehicle half shafts; bushes for vehicles and vehicle shock absorbers encompass a variety of components and parts for vehicles that are at least similar to the opponent’s brakes for vehicles as they are directed to the same relevant public, use the same distribution channels and can be produced by the same companies.

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 goods found to be at least similar are directed at the public at large and at professionals in the automotive sector.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

SUPRA	LIP SUPRA
Earlier trade mark	Contested sign

The relevant territory is France.

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).

In its observations the applicant adduces that the word ‘SUPRA’ is a Latin preposition which means ‘superior, above or over’ that has a laudatory meaning and therefore has to be considered non-distinctive. In this respect the Opposition Division recalls, firstly, that in French ‘SUPRA’ will be perceived by the relevant public as the adverb used in texts or books to refer to something mentioned earlier or above (information extracted from www.larousse.fr on 14/03/2019). Secondly, although the prefix ‘SUPRA’ exists in French with the aforementioned laudatory meaning, in order to be perceived as such, it has to be used as such, that is preceding another word to which it is conjoined, as in the case in words such as ‘supranational’. Therefore, the applicant’s claim must be aside and the common element ‘SUPRA’, as presented in the signs, is considered distinctive to an average degree as it has no meaning in relation to the goods involved.

On the other hand, in its observations, the opponent argues that the verbal element ‘LIP’ present in the contested sign is a usual term in the automotive industry which designates an adaptable part of vehicles and therefore the term has to be considered non-distinctive. In support of its argumentation, the opponent submits several printouts in English where the English word ‘Lip’ is shown in combination with car components. However the Opposition Division considers that the evidence filed does not demonstrate that the relevant public, i.e. the French-speaking public, even including professionals in the automotive sector, has been exposed to widespread use of the English term and has become accustomed to it. Under these circumstances, the applicant’s claim must be set aside and the word ‘LIP’ is considered distinctive to average degree.

Visually and aurally the signs coincide in ‘SUPRA’, which is the entire earlier mark and is wholly incorporated in the contested sign. However, the signs differ in the element ‘LIP’ of the contested sign.

While it is true that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark it must be stressed that this argument cannot hold true in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them. In the present case, although the word ‘SUPRA’ is placed at the end of the contested sign, it visually plays there an independent and distinctive role and will be easily perceptible by the relevant public.

It is therefore considered that the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as to the same adverb referring to something mentioned earlier or above. The word ‘LIP’ present in the contested sign will not introduce any conceptual difference.

Therefore, the signs are 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 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.

e) Global assessment, other arguments and conclusion

In the present case, the contested goods are similar to the opponent’s goods and target the general and professional public with a degree of attention that varies from average to high. The earlier mark has a normal distinctiveness.

The signs are visually and aurally similar to an average degree and conceptually highly similar. Indeed, the earlier mark is totally reproduced in the contested sign, where it will be perceived by the relevant public as an independent and distinctive component. As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T-519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T-260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T-179/11, Seven Summits, EU:T:2012:254, § 26).

Moreover, 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 undertaking or economically linked undertakings. In the present case it is likely that consumers 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.

In its arguments the applicant emphasises the importance of the beginnings of conflicting signs. Although the importance of the initial part of a word in the consumer’s mind has been underlined by the General Court, this finding is not an axiom. As noted by the Court itself, this consideration cannot apply in all cases (16/05/2007, T-158/05, Altrek, EU:T:2007:143). In the present case, the integral reproduction of the earlier mark as an independent element in the contested sign outweighs the difference caused by the initial element 'LIP'.

The applicant also refers to previous Court decisions in relation to the impact of the low distinctiveness of the earlier mark on the comparison of the signs. However, as explained in section c) of this decision, the earlier mark is considered distinctive to an average degree and therefore the applicant’s argument in this respect has to be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 4 039 888 for the word mark ‘SUPRA’. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martina GALLE

Jorge ZARAGOZA GÓMEZ

Anna BAKALARZ

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.