OPPOSITION No B 3 049 109

Audi AG, Auto-Union-Str. 1, 85045 Ingolstadt, Germany (opponent), represented by Annette Krah, Patentabteilung I/EZ-1, 85045 Ingolstadt, Germany (professional representative)

a g a i n s t

Audiex Oy, c/o EnDale Mitiku, Kalikkakuja 13, 90540 Oulu, Finland (applicant), represented by Berggren Oy, Eteläinen Rautatiekatu 10 A, 00100 Helsinki, Finland (professional representative).

On 22/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 109 is upheld for all the contested goods.

2. European Union trade mark application No 17 657 024 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 17 657 024 ‘AUDIEX’. The opposition is based on European Union trade mark registration No 17 253 493 ‘Audi’. The opponent invoked Article 8(1)(a) and (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.

1. The goods

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

Class 9: Scientific research and laboratory apparatus, educational apparatus and simulators; apparatus, instruments and cables for electricity; recorded content; Information technology and audio-visual, multimedia and photographic devices; magnets, magnetizers and demagnetizers; measuring, detecting and monitoring instruments, indicators and controllers; navigation, guidance, tracking, targeting and map making devices; optical devices, enhancers and correctors; safety, security, protection and signalling devices; diving equipment; scientific and laboratory devices for treatment using electricity; information technology and audiovisual equipment.

The contested goods, after limitation, are the following:

Class 9: Audio codecs.

The contested audio codecs are included in the broader category of the opponent’s information technology and audiovisual equipment. Therefore 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 are specialised goods directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high depending on the specific technical nature of the goods.

3. The signs

Audi	AUDIEX
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).

Both the earlier mark and the contested sign are word marks, consisting of a single word. In the case of word marks, the word itself is protected, not its written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case or a combination of the two.

The Opposition Division notes that the word ‘Audi’ is a Latin verbal form, equivalent to the imperative verb ‘listen’. Notwithstanding, the Opposition Division finds that the Latin origin and meaning of the word will in principle remain unknown for a significant part of the European Union public with the result that the relevant public will perceive the earlier sign as meaningless word, having an average degree of distinctiveness.

The word ‘AUDIEX’ of the contested sign does not convey any meaning for the public in the relevant territory and therefore, it is distinctive to an average degree for the goods concerned. The opponent claims that the contested sign will be split into two elements ‘AUDI’ and ‘EX’. However, since the sign is not formed by two meaningful elements that could be immediately identified by the relevant consumers, the Opposition Divisions considers that it will not be split into two parts, but be perceived as a whole, as one meaningless word. In relation to the relevant goods it has an average degree of distinctiveness.

Visually and aurally, the signs coincide in the sequence of letters/sounds ‘AUDI’, which constitute the earlier mark in its entirety and are the first four letters/sounds (out of six) of the contested sign. The signs differ in the last two letters/sounds, ‘EX’, of the contested sign.

Taking into account that the earlier mark is rather short sign, the presence of the additional two letters ‘EX’ at the end of the contested sign will be noticed by the relevant consumers. However, because the contested sign fully incorporates the entire earlier mark at its beginning, the signs are visually and aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 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.

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 registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods at issue are identical. The similarities and differences between the signs have been established. The degree of attention of the relevant public may vary from average to high.

The signs coincide in their letters ‘AUDI’, having the earlier sign totally encompassed in the beginning of the contested sign, in the part where consumers pay most attention. The signs only differ in the last letters ‘EX’ of the contested sign. Therefore, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Furthermore, account should be 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).

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 European Union trade mark registration No 17 253 493. 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(1)(a).

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

Rasa BARAKAUSKIENE

Birgit FILTENBORG

Erkki MÜNTER

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.