OPPOSITION No B 3 057 179

Trigano, société anonyme, 100, rue Petit, 75019, Paris, France (opponent), represented by Desbarres & Staeffen, 18, avenue de l'Opéra, 75001, Paris, France (professional representative)

a g a i n s t

Zhejiang Lianmei Industrial Co., Ltd, No. 99, Jiuzhou West Road, Economic Development Zone, 321300, Yongkang, Zhejiang, People’s Republic of China (applicant), represented by Isidro Jose Garcia Egea, Calle Obispo Frutos, 1B 2°A, 30003, Murcia, Spain (professional representative).

On 28/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 179 is upheld for all the contested goods.

2. European Union trade mark application No 17 890 406 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 17 890 406 . The opposition is based on European Union trade mark registration No 7 107 477 ‘TESSORO’. 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 12: Apparatus for locomotion by land; vehicles, camper vans, mobile homes, caravans, motor homes.

The contested goods are the following:

Class 12: Push scooters [vehicles]; electric bicycles; two-wheeled trolleys; bicycle tyres; hubs for vehicle wheels; mopeds; electric vehicles; locomotives; safety seats for children, for vehicles; pneumatic tires.

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 push scooters [vehicles]; electric bicycles; mopeds; electric vehicles; locomotives are included in the broad categories of the opponent’s apparatus for locomotion by land; vehicles. Therefore, they are identical.

The contested bicycle tyres, hubs for vehicle wheels, safety seats for children, for vehicles and pneumatic tires are similar to the opponent’s vehicles as they are complementary, with the same or similar distribution channels and the same relevant public. Moreover, some of these contested goods and the opponent’s goods may have the same commercial origin.

The contested two-wheeled trolleys are similar to a low degree to the opponent´s vehicles on the basis that they can have the same purpose, are directed at the same relevant public, and they may be in competition.

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 identical or similar are directed at the public at large save for locomotives which are directed at business customers with specific professional knowledge or expertise, such as railway companies.

With respect to two-wheeled trolleys the degree of attention may vary from average to high depending on the price.

Taking into consideration the price of cars and other vehicles, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The same goes for other vehicles. The consumer will be an informed one, taking all relevant factors into

consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T-486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 39-42).

Taking into consideration that the spare parts of vehicles include parts which serve to ensure the safety of the vehicle’s users and a proper functioning of the vehicle, the relevant consumers are likely to pay a high degree of attention when purchasing them (22/03/2011, T-486/07, CA, EU:T:2011:104, § 36-38; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137,§ 39-42).

With respect to safety seats for children, for vehicles, safety concerns or elevated prices can result in the public at large being more attentive. Therefore the degree of attention of the relevant public for these goods will be high.

c) The signs

TESSORO
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 word ‘TESSORO’ constituting the earlier mark is likely to be perceived with a meaning by some parts of the relevant public in the European Union, such as the Italian- and Spanish-speaking part, as it closely resembles the word ‘TESORO’ which means ‘treasure’ in Italian and Spanish. Another part of the relevant public will not attribute any meaning to this word.

While the word ‘TESORO’ refers to wealth or riches, it is not commonly used to indicate the goods at issue or any of their objective characteristics and, in fact, will be perceived as a fanciful term. It follows that the verbal element ‘TESSORO’ possesses normal distinctiveness for all parts of the relevant public.

The contested sign consists of the verbal element ‘tesoro’ depicted in lower-case letters in a slightly stylised type face which is not particularly fanciful and only has a limited impact, and only from the visual point of view. As stated above, for a part of the public, such as the Italian- and Spanish-speaking consumers, the word ‘tesoro’ means ‘treasure’, whereas for another part of the relevant public it has no meaning. For the reasons outlined above, the verbal element ‘TESORO’ possesses normal distinctiveness for all parts of the relevant public.

Visually, the signs coincide in the letter sequence TES*ORO. They differ both in the additional letter ‘S’ of the earlier mark and in the slightly stylised type face of the contested sign. As these differences have only a minor impact on the overall appearance of both signs, the signs are held to be visually highly similar.

Aurally, both the earlier mark and the contested sign consist of three syllables: /te-sso-ro/ and /te-so-ro/ respectively. The pronunciation of the first and last syllables of both signs is identical while that of the second syllable will either be identical – if the relevant consumer pronounces the double letter ‘S’ of the earlier mark in a soft manner – or similar, if the double letter ‘S’ is pronounced in a hard manner. It follows that the marks at issue are aurally identical or highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For a part of the relevant public, such as the Italian- and Spanish-speaking part, the semantic meaning of both signs will be the same given that the earlier mark closely resembles the dictionary word ‘tesoro’. For this part of the relevant public, the marks will be conceptually identical.

For the rest of the relevant public, for whom neither sign has a meaning, a conceptual comparison is not possible and so 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.

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 European Union and so it is distinctive to a normal degree.

e) Global assessment, other arguments and conclusion

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).

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.

In the present case, the overall impression given by the signs at issue is closely similar given the high degree of visual similarity, the identity or high degree of aural similarity, and the conceptual identity for part of the relevant public. The goods are identical or similar (to varying degrees) and the earlier mark enjoys a normal scope of protection from its average distinctive character.

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).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Taking the above into account, and despite the fact that the degree of attention is high for most of the relevant goods and that some of the goods are only lowly similar, the Opposition Division concludes that there exists a likelihood of confusion.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 107 477. 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

Boyana NAYDENOVA

Kieran HENEGHAN

Catherine MEDINA

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.