OPPOSITION No B 3 060 599

Continental Reifen Deutschland GmbH, Vahrenwalder Str. 9, 30165 Hannover, Germany (opponent), represented by Florian Schleifer, Vahrenwalder Str. 9, 30165 Hannover, Germany (employee representative)

a g a i n s t

Paalupaikka Oy, Kivirannantie 9, PL 19, FI-74101 Iisalmi, Finland (applicant), represented by Jonna Rossi, Volttikatu 10, FI-70700 Kuopio, Finland (employee representative).

On 17/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 599 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 892 307 for the word mark ‘Kontio BearPaw’. The opposition is based on European Union trade mark registration No 12 095 519 and European Union trade mark application No 17 563 081, both for the word mark ‘CONTI’. 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.

1. The goods

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

European Union trade mark registration No 12 095 519:

Class 12: Vehicles, apparatus for transportation by land, air or water; parts and accessories for vehicles for transportation by land, air or water as far as included in class 12; combination display instruments, land vehicle cockpits, instrument panels, center consoles; tires, inner tubes for tires, wheels, wheel rims, treads for the retreading of tires, hub caps, rim strips, repair outfits for tires, treads and kits for repairing tires and inner tubes not included in other classes; valves for vehicle tires; chassis and parts thereof included in class 12; controlled and non-controlled chassis and suspensions; electronic, hydraulic, electromechanical, electrohydraulic and mechanical brakes for vehicles; parts and accessories for electronic, hydraulic, electromechanical, electrohydraulic and mechanical brakes for vehicles; brake cylinders, brake pads, brake calipers, brake disks, brake linings, brake hoses; mechanical and hydraulic controllers and regulators not included in other classes; regulated and unregulated electromechanical and electrohydraulic steering systems and their components; hydraulic power steering, steering columns, steering gear; electrical, electronic and mechanical actuators, drive shafts and electric motors; safety equipment for motor vehicles as far as included in class 12; airbags, belt tensioners and their parts and accessories as far as included in class 12; shaft couplings and transmission mechanism, including shift clutches for land vehicles; active and passive, regulated and unregulated dampers and springs for vehicles, wheels and their parts, particularly air pressure springs and gas springs; air supply units for air spring systems; shock absorbers and suspension struts for vehicles; shock absorber springs for vehicles, suspension springs for vehicles; vibration dampers and torsional vibration dampers (except as components of land vehicle engines) for vehicles; vehicle engines, steering apparatus; vehicle cabins and driver seats; hydromounts as vehicle components as far as included in class 12; axles and axle modules, axle boots, diaphragms, drive belts, transmission belts not included in other classes; cooling, heating, brake, fuel, charge air, oil, hydraulic hoses as vehicle components and accessories as far as included in class 12; vehicle interiors lining; airbag covers; paneling for dashboards; interior upholstery for vehicles; motor vehicle seats; cigarette lighters for automobiles; cockpit cross beams; driver workstations, driver cabins; ventilation nozzles, air deflector elements and air lines; window and headlight cleaning systems for motor vehicles as well as the associated containers, nozzles, hoses, hose couplings, pumps, heaters and valves; windshield and headlight cleaning systems; window lift and window positioning systems for vehicles; electric/electronic drives for convertible soft tops, sliding roofs and sun protection devices; rubber or plastic concertina walls for trains and articulated buses; fuel lines; fuel tank systems for motor vehicles.

European Union trade mark application No 17 563 081:

Class 12: Vehicles; apparatus for transportation on land and/or on water and/or by air; parts and accessories for vehicles and/or apparatus for transportation on land and/or on water and/on by air as far as included in class 12; powertrains, including engines and motors, for land vehicles; motors and engines for land vehicles; vehicle engines; electric motors for land vehicles; combination display instruments [vehicle parts], land vehicle cockpits, instrument panels [vehicle parts], center consoles [fahrzeuginnenteile]; tires, inner tubes for tires, wheels, wheel rims, treads for the retreading of tires, hub caps, rim strips, materials and kits for repairing tires and inner tubes not included in other classes; valves for vehicle tires; chassis and parts thereof included in class 12; controlled and non-controlled chassis and suspensions; electronic, hydraulic, electromechanical, electrohydraulic and mechanical brakes for vehicles; parts and accessories for electronic, hydraulic, electromechanical, electrohydraulic and mechanical brakes for vehicles; brake cylinders, brake pads, brake calipers, brake disks, brake linings, brake hoses; mechanical and hydraulic controllers and regulators not included in other classes; regulated and unregulated electromechanical and electrohydraulic steering systems and their components; hydraulic power steering, steering columns, steering gear; safety equipment for motor vehicles as far as included in class 12; airbags, belt tensioners and their parts and accessories as far as included in class 12; shaft couplings and transmission mechanism, including shift clutches for land vehicles; active and passive, regulated and unregulated dampers and springs for vehicles, wheels and their parts, particularly air pressure springs and gas springs; air supply units for air spring systems; shock absorbers and suspension struts for vehicles; shock absorber springs for vehicles, suspension springs for vehicles; vibration dampers and torsional vibration dampers (except as components of land vehicle engines) for vehicles; steering apparatus; vehicle cabins and driver seats; hydromounts as vehicle components as far as included in class 12; axles and axle modules, axle boots, diaphragms; drive belts, transmission belts not included in other classes; cooling, heating, brake, fuel, charge air, oil, hydraulic hoses as vehicle components and accessories as far as included in class 12; fuel lines for vehicles, fuel tanks for vehicles; safety tanks for vehicles; fuel bladders for vehicles; fuel tank systems for motor vehicles; vehicle interiors lining; airbag covers; paneling for dashboards; steering wheel covers; tonneau covers; gear shift covers; interior upholstery for vehicles; motor vehicle seats; seat cushions for the seats of vehicles; car seat coverings, seat covers [shaped] for use in automobiles; saddle covers for bicycles; cockpit cross beams; driver cockpits, driver cabins; window and headlight cleaning systems for motor vehicles as well as the associated containers, nozzles, hoses, hose couplings, pumps, heaters and valves; windshield wipers, windshield wiper blades for vehicles, windshield wiper arms; rubber or plastic concertina walls for trains and articulated buses; armrests for automobile seats; sun shields and visors for motor cars, sun visors [vehicle parts]; automotive interior trim; protective strips for vehicle bodies; head restraints for vehicles, vehicle head rest covers.

The contested goods are the following:

Class 12: Vehicles and conveyances.

Vehicles and conveyances are identically contained in all lists of goods, including synonyms as conveyances being a synonym of vehicles.

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 and business customers with specific professional knowledge or expertise.

Business consumers are generally more observant than the normal average consumer. In any case, private consumers also pay increased attention in particular when purchasing goods in the upper-price segment. These vehicles and conveyances that are the subject of these proceedings are also often technically complex, which means that the consumers will obtain in-depth information about their modes of operation before making the purchase and pay more attention to the name of the provider. For instance, taking into consideration the price of cars, 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 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). Therefore, the degree of attention is high.

3. The signs and the distinctiveness of the earlier marks

CONTI	Kontio BearPaw
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 marks are word marks containing the sole element ‘CONTI’. This element lacks any meaning for a large part of the relevant public and means, inter alia, ‘earls’ or ‘counts’ in Italian and Romanian. The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation. Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have no meaning for any of the goods in question from the perspective of the public in the relevant territory as there is no link between a noble title and vehicles. Therefore, the distinctiveness of the earlier marks must be seen as normal.

The contested sign is a word mark composed of two verbal elements ‘Kontio’ and ‘BearPaw’. The element ‘Kontio’ means ‘bear’ in Finnish and is meaningless for the rest of the public. Due to the absence of any semantic relation between bear and vehicles, this element is distinctive for the relevant public in relation to the goods at issue. The element ‘BearPaw’ might be separated into ‘Bear’ and ‘Paw’ by the English-speaking public as these words are English words. This element lacks any meaning for the rest of the public of the relevant territory. In any case, there is no straightforward connection between the goods at issue and the element ‘BearPaw’, which is, therefore, distinctive.

Visually, the signs coincide in the letters ‘*ONTI*’. However, they differ in their first letters, ‘C’ in the earlier marks and ‘K’ in the contested sign, and in the additional letter ‘o’ at the end of the contested sign. The signs also differ in the additional element ‘BearPaw’ of the contested sign, which is distinctive. Consequently, the length and the structure of the signs are different, the earlier marks being composed of one single element of five letters whereas the contested sign has two elements with a total of 13 letters. Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /*onti*/. For a part of the public, for example the French-, English-, Spanish- and German-speaking part of the public, the signs also coincide in the pronunciation of the letters ‘C’ and ‘K’, which are identical. The pronunciation of the signs differs in the sound of the last letter, ‘o’, in the first element of the contested sign and in the additional element ‘BearPaw’, which have no counterpart in the earlier marks. Therefore, as this element is distinctive, the rhythm and the length of the sign is different, namely two syllables in the earlier marks and six syllables in the contested sign. Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Some elements of the marks are meaningful, either for the Italian- and Romanian-speaking parts of the public (i.e. ‘CONTI’), for the Finnish-speaking part of the public (i.e. ‘Kontio’) or for the English-speaking part of the public (i.e. ‘BearPaw’). Nevertheless, there is no part of the public that will grasp elements in both marks. Therefore, in the cases specified above, one mark is meaningless for the relevant public, and therefore, the signs are not conceptually similar. For the rest of the public, 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. 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).

In the present case, the conflicting goods are identical and target the general and professional public, both with a high degree of attention.

The signs are visually and aurally similar to a low degree. Conceptually, the signs are not similar for part of the public whereas this aspect does not influence the comparison for the others. The earlier marks are distinctive to a normal degree.

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

The similarities between the signs are only due to the fact that they share a sequence of letters but not a full element. In particular, the earlier marks are not wholly incorporated in the contested sign or vice versa. Moreover, the relevant public will perceive ‘BearPaw’ as a distinctive and non-allusive element.

Therefore, the differing elements of the signs and the additional distinctive element of the contested sign are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing in mind that the relevant public displays a high degree of attention.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Vita VORONECKAITE

Cindy BAREL

Alicia BLAYA ALGARRA

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.