OPPOSITION No B 3 060 333

Amazon Europe Core S.à r.l., 38 avenue John F. Kennedy, L-1855 Luxembourg, Luxembourg (opponent), represented by Cooley (UK) LLP, Dashwood 69 Old Broad Street, London EC2M 1QS, United Kingdom (professional representative)

a g a i n s t

CP Comercial SA, Rodovia Antonio Heil - Km 01 - nº 800 - sala 03 – Itaipava, Itajaí Santa Catarina 88316-001, Brazil (applicant), represented by Marks & Clerk LLP, Aurora, 120 Bothwell Street, Glasgow G2 7JS, United Kingdom (professional representative).

On 29/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 333 is upheld for all the contested goods.

2. European Union trade mark application No 17 887 900 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 17 887 900 for the figurative mark , namely against all the goods in Class 12. The opposition is based on, inter alia, European Union trade mark registration No 16 947 681 for the word mark ‘AMAZON’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s aforementioned European Union trade mark registration.

1. The goods

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

Class 12: Tyres and wheels for vehicles and bicycles; automobile tyres; tyre grips; bicycle tyres.

The goods are the following:

Class 12: Tires.

The contested goods tires include, as a broader category, for example the opponent’s tyres and wheels for vehicles and bicycles. 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 the public at large as well as at the professionals.

The opponent claims that tyres are relatively inexpensive goods and that the average consumer would attach only a low degree of attention to such goods. In support of this claim the opponent refer to the judgment of 15/06/2010, T‑547/08, Strumpf, EU:T:2010:235, § 43. However, the Opposition Division finds that the degree of attention of the relevant public may vary from average to high. Whether (in)expensive or not, the main fact in the case of tyres is that driving safety depends on their quality and proper functioning. Therefore, at least a part of the relevant public will be more attentive when purchasing the goods at issue. As regards the cited case-law, it is noted that it concerns the level of attention of the relevant public in relation to socks in Class 25.

3. The signs

AMAZON
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The common element ‘AMAZON’ will be associated with a river in South America flowing through Peru, Colombia and Brazil into the Atlantic Ocean respective with the Amazon rainforest also known as Amazonia (in English). This is due to the close equivalent words in various languages of the relevant territory (‘Amazonas’ in Spanish, Portuguese or German, ‘Amazzoni’ in Italian, ‘Amazone’ in French, ‘Amazonka’ in Czech, Slovak or Polish). A part of the relevant public will also associate the word ‘AMAZON’ with a member of a nation of women warriors (Greek Mythology) or as a tall, aggressive strong-willed woman. None of those meanings have, however, any relation to the goods at issue, and are therefore considered distinctive.

The contested sign has no element that could be considered clearly more dominant than other elements. Yet, it is noted that the figurative element in the contested sign, which resembles a leave is of a rather decorative nature. Besides, it may be understood by the relevant consumers as a reference to the environmentally friendly qualities of the goods at issue. Therefore, this element is considered of a very limited (if any) distinctive character.

Visually, the signs coincide in the distinctive verbal element ‘AMAZON’, which constitutes entirely the earlier mark. The signs differ in the additional figurative element of the contested sign as well as its stylisation.

However, apart from the fact that the figurative element is of a very limited (if any) distinctive character, it is noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs will be identical. The figurative element of the contested sign is not a subject to a phonetic assessment.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a highly similar meaning, since the figurative element resembling a leave adds a slightly different connotation to the word ‘AMAZON’ in the contested sign but does not change its overall meaning, the signs are considered conceptually similar at least to a very high degree.

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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

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).

In the present case, the goods at issue have been found identical.

Albeit the signs at issue differ in some elements as described previously, the fact is that both of them consist of an identical verbal element ‘AMAZON’. The additional figurative element of the contested sign as well as its stylisation is rather of a decorative nature. Moreover, the depiction of a leave may be perceived as a reference to the environmentally friendly qualities of the goods, which contributes to its very low (if any) distinctive character. Besides, in case of the earlier word mark it is irrelevant whether its are written in lower or upper case letters or in a combination thereof since it is the word as such that is protected and not its written form.

While the few differences (of a rather minimal impact) between the signs will not be overlooked, they are not sufficient to counteract the visual, aural and conceptual similarity between the signs, deriving from the common distinctive element ‘AMAZON’. Hence, the dissimilarities between the signs at hand do not allow the consumers to distinguish between them safely, even in case of a higher level of attention.

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 16 947 681. It follows that the contested trade mark must be rejected for all the contested goods.

As the aforementioned earlier mark leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Marta Maria CHYLIŃSKA

Renata COTTRELL

Tu Nhi VAN

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.