OPPOSITION No B 3 064 102

Nissan Jidosha Kabushiki Kaisha (also trading as Nissan Motor Co., Ltd.), No. 2, Takara-cho, Kanagawa-ku, Yokohama-shi, Kanagawa-ken, Japan (opponent), represented by Keltie LLP, No. 1 London Bridge, SE1 9BA London, United Kingdom (professional representative)

a g a i n s t

VDL Groep B.V., Hoevenweg 1, 5652 AW Eindhoven, Netherlands (applicant), represented by Taylor Wessing N.V., Kennedyplein 201, 5611 ZT Eindhoven, Netherlands (professional representative).

On 24/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 102 is upheld for all the contested goods, namely:

Class 7: Power installations; vehicle engine parts; control cables and system control instruments for machines, engines or motors; transmissions not otherwise classified.

Class 9: All the goods applied for.

Class 12: All the goods applied for.

2. European Union trade mark application No 17 895 702 is rejected for all the contested goods. It may proceed for the remaining uncontested goods in Class 7.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 895 702 for the word mark ‘VDL E-POWER’, namely against some of the goods in Class 7 and all the goods in Classes 9 and 12. The opposition is based on, inter alia, United Kingdom trade mark registration No 3 293 755 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION IN RELATION TO EARLIER FRENCH TRADE MARK REGISTRATION No 4 431 504

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, the publication date of the contested sign is 13/06/2018 and therefore the relevant period to file an opposition expired on 13/09/2018. The notice of opposition and the first submissions by the opponent were filed on 13/09/2018, together with evidence from the official databases of both the UK and France for the trade mark. Although the first notice of opposition only mentioned the earlier UK trade mark as a basis of the opposition, the submissions sent at the same time also referred to the French earlier trade mark. The opponent detected this incident and submitted the corresponding clarification as well as the pertitnent sections of the notice of opposition on the same day (i.e. within the opposition period).

Accordingly, since the opponent clearly referred to both earlier rights and submittted the corresponding evidence concerning the substantiation of these earlier trade marks within the opposition period (additionally making reference to evidence accessible online from a source recognised by the Office), the Opposition Division concludes that the opposition is also based on French trade mark registration No 4 431 504 for the figurative mark .

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 two earlier trade marks. The Opposition Division will first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 3 293 755.

1. The goods

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

Class 9: Power distribution or control machines and apparatus for land vehicles; inverters for land vehicles; Batteries for land vehicles.

Class 12: Electrically-assisted land vehicles; wagons; trucks; vans [vehicles]; sport utility vehicles; motorised buses; recreational vehicles (RV); sports cars; racing cars; engines for land vehicles; motors, electric, for land vehicle; electric drive unit for land vehicles; bodies for land vehicles; automobile chassis; transmissions, for land vehicles; steering wheels for automobiles; automobiles and their parts and fittings; automobiles; electric vehicles and their parts and fittings; fuel cell vehicles and their parts and fittings; AC motors or DC motors for land vehicles [not including "their parts"]; mechanical transmissions, gearings and power transmitting mechanisms for land vehicles; shafts, axles or spindles [for land vehicles]; axle and wheel bearings for land vehicles; shaft couplings, couplings for land vehicles; axle bearings [for land vehicles]; power transmissions and gearing [for land vehicles]; shock absorbers [for land vehicles]; springs for vehicle suspension systems and units; brakes [for land vehicles]; driving motors for land vehicles; hybrid systems for automobiles, trucks, vans, sport utility vehicles, motor buses, recreational vehicles (RV), sports cars, racing cars; electric automobiles; hubs for vehicle wheels; wheels for vehicles.

The contested goods are the following:

Class 7: Power installations; vehicle engine parts; control cables and system control instruments for machines, engines or motors; transmissions not otherwise classified.

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of electric power; power distribution machines or power controller machines and power distribution devices for vehicles; transducers for land vehicles; chargeable batteries for vehicles; batteries for vehicles; parts of batteries; batteries for land vehicles; charging stations for electric vehicles; computer software to operate vehicles; computer programs for use in autonomous driving of vehicles.

Class 12: Vehicles, apparatus for locomotion by land, air or water; electric vehicles; electrically powered motor vehicles; electrically powered buses for the transportation of people; plug-in electric vehicles; self-propelled electric vehicle; motors, electric, for land vehicles; electrical drive units for land vehicles; electric vehicles and their parts and fittings; alternating current motors and direct current motors for vehicles (not including their parts); trucks; cars; buses; cargo trailers for land vehicles; semi-trailers; structural parts for the mentioned land vehicles; bodies for vehicles; underbodies of vehicles; transmissions for land vehicles; driving motors for land vehicles; couplings for land vehicles; transmission belts and driving belts for land vehicles and land vehicle parts.

The term including’, used in the applicant’s and the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 7

Regardless of the different classes, as mentioned above, the contested vehicle engine parts; control cables and system control instruments for machines, engines or motors are similar to a high degree to the opponent’s engines for land vehicles in Class 12, as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested power installations are similar to the opponent’s power distribution or control machines and apparatus for land vehicles in Class 9, since they can have the same purpose and methods of use. Furthermore, they can originate from the same undertaking and be distributed through the same distribution channels.

The contested transmissions not otherwise classified are similar to the opponent’s transmissions, for land vehicle since they can have the same purpose and method of use. Furthermore, they can originate from the same undertaking and be distributed through the same distribution channels.

Contested goods in Class 9

Batteries for land vehicles are identically contained in both lists of goods.

The contested batteries for vehicles; chargeable batteries for vehicles include, as a broader category, or overlap with, the opponent’s batteries for land vehicles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested power distribution machines or power controller machines and power distribution devices for vehicles include, as a broader category, the opponent’s power distribution or control machines and apparatus for land vehicles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested apparatus and instruments for controlling electricity include, as a broader category, the opponent’s inverters for land vehicles, given that the latter is a device that converts direct current into alternating current (see www.oed.com). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested apparatus and instruments for accumulating electricity include, as a broader category, the opponent’s batteries for land vehicles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested parts of batteries are similar to the opponent’s batteries for land vehicles, since they usually have the same producer, distribution channels and relevant public. Furthermore, they are complementary.

The contested apparatus and instruments for conducting, switching, transforming or regulating electricity; apparatus for recording, transmission or reproduction of electric power; charging stations for electric vehicles are at least similar to the opponent’s power distribution or control machines and apparatus for land vehicles. Indeed, these goods from the earlier mark allow power to be distributed (which is just another way of saying conducted, transmitted, reproduced) and controlled (which also implies switching, transforming or regulating power). These goods at least coincide in purpose ad nature, relevant public and distribution channels.

The contested computer software to operate vehicles; computer programs for use in autonomous driving of vehicles refer to a very specific software integrated into vehicles (i.e. software specifically designed for the smooth running of on-board computers in vehicles) and nowadays are considered as the parts and fittings of vehicles. Accordingly, these contested goods are similar to a low degree to the opponent’s electrically-assisted land vehicles; electric vehicles and their parts and fittings, since they have the same general purpose. It is very likely that the relevant consumer will regard the goods in question as originating from the same undertaking. Furthermore, they are complementary.

A ‘transducer’ is, by definition, any device such as an electric motor, which converts one form of energy into another; an ‘inverter’ has been previously defined above. Accordingly, the contested transducers for land vehicles are at least similar to a low degree to the opponent’s inverters for land vehicles, since they have the same general purpose of converting one form of energy/current into another. They can coincide in distribution channels and relevant public.

Contested goods in Class 12

Electric vehicles; motors, electric, for land vehicles; electrical drive units for land vehicles; electric vehicles and their parts and fittings; trucks; transmissions for land vehicles; driving motors for land vehicles; couplings for land vehicles are identically contained in both lists of goods (including synonyms).

The contested vehicles, apparatus for locomotion by land include, as broader categories, the opponent’s sports cars. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested electrically powered motor vehicles; electrically powered buses for the transportation of people include and overlap with the opponent’s electrically-assisted land vehicles. Therefore, they are identical.

The contested plug-in electric vehicles; self-propelled electric vehicle are included in the broad category of the opponent’s electric vehicles. Therefore, they are identical.

The contested alternating current motors and direct current motors for vehicles (not including their parts) include, as a broader category, the opponent’s AC motors or DC motors for land vehicles [not including "their parts"]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cars; buses include, as broader categories, the opponent’s sports cars; motorised buses, respectively. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested bodies for vehicles include, as a broader category, the opponent’s bodies for land vehicles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested underbodies of vehicles include, as a broader category, the opponent’s automobile chassis. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested transmission belts and driving belts for land vehicles and land vehicle parts are included in the broad category of the opponent’s transmissions, for land vehicles. Therefore, they are identical.

The contested structural parts for the mentioned land vehicles overlap with the opponent’s automobiles and their parts and fittings. Therefore, they are identical.

The contested cargo trailers for land vehicles; semi-trailers are at least similar to the opponent’s trucks, as they usually have the same purpose of transporting bulky merchandise. They usually coincide in producer, relevant public and distribution channels.

The contested apparatus for locomotion by air or water are similar to the opponent’s sports cars, as they have the same purpose. They can target the same relevant public and they are in competition.

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 or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise especially in the automobile industry.

The degree of attention is considered high, because of the specialised nature of the goods and their price.

Taking into consideration the price of cars, trucks, buses and the like in the relevant goods, 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, for example, 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). A high degree of attention is also expected as regards the remaining goods (e.g. power installations, vehicle engine parts, computer software to operate vehicles, wheels for vehicles, motors, electric, for land vehicles, etc.), which are often very expensive and are not purchased on regular basis.

3. The signs

	VDL E‑POWER
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 contested sign is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is depicted in upper or lower case letters, or in a combination thereof. Consequently, the difference in the signs under comparison in this regard is immaterial.

In the context of the relevant goods, the element ‘POWER’ that the signs have in common is likely to be understood by the relevant public as meaning ‘energy, especially electricity, that is obtained in large quantities from a fuel source and used to operate lights, heating, and machinery’ (information extracted from Collins English Dictionary on 16/10/2019 at https://www.collinsdictionary.com/dictionary/english/power). Bearing in mind that some of the relevant goods directly refer to power (i.e. the contested power installations; power distribution machines or power controller machines and power distribution devices for vehicles; electrically powered motor vehicles; electrically powered buses for the transportation of people) or they are closely connected to it (i.e. the contested transmissions not otherwise classified, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of electric power; transducers for land vehicles; chargeable batteries for vehicles; batteries for vehicles; batteries for land vehicles; charging stations for electric vehicles; vehicles, apparatus for locomotion by land, air or water; electric vehicles; plug-in electric vehicles; self-propelled electric vehicle; motors, electric, for land vehicles; electrical drive units for land vehicles; electric vehicles; alternating current motors and direct current motors for vehicles (not including their parts); trucks; cars; buses; cargo trailers for land vehicles; semi-trailers; transmissions for land vehicles; driving motors for land vehicles; transmission belts and driving belts for land vehicles), the element ‘POWER’ is non‑distinctive in relation to these kind of goods. As regards the remaining goods, which are mainly parts and fittings of the goods in question, bodies and underbodies for vehicles, structural parts for land vehicles and couplings for land vehicles, the distinctive character of this element is weak, as there is a certain link in relation to them.

The prefix ‘e‑’ that precedes the word ‘POWER’ in both signs may be perceived as an abbreviation for ‘electronic’ (information extracted from Collins English Dictionary on 16/10/2019 at https://www.collinsdictionary.com/dictionary/english/e_2) or even for ‘electric’. In this regard, if the prefix ‘e‑’ is perceived as the abbreviation for ‘electronic’, it refers to ‘of, concerned with, using, or operated by devices in which electrons are conducted through a semiconductor, free space, or gas’ (information extracted from Collins English Dictionary on 16/10/2019 at https://www.collinsdictionary.com/dictionary/english/electronic); however, if the prefix ‘e‑’ is perceived as the abbreviation for ‘electric’, it ‘is used to refer to the supply of electricity’ (information extracted from Collins English Dictionary on 16/10/2019 at https://www.collinsdictionary.com/dictionary/english/electric). Accordingly, the combination ‘E‑POWER’ may be perceived as ‘electronic energy’ or as ‘electrical power’. Given that the earlier mark is perceived as an indivisible unit, this element has a very limited distinctive character. However, contrary to the applicant’s assertions this element cannot be considered as devoid of distinctive character. In particular, the applicant claims that the earlier mark is devoid of distinctiveness in relation to goods in Classes 9 and 12, since it serves to designate some characteristics of these goods. In this regard, the applicant submits some documents in support of its arguments. The applicant refers to the opponent’s website www.nissan‑global.com and submits an extract from that source (exhibit 5) as regards the ‘E-POWER’ technology offered by the opponent. It also refers to an identical application that was made at the EUIPO for identical goods but which was refused due to its lack of distinctiveness and its descriptiveness (exhibits 6 and 7).

Firstly, The Opposition Division notes that the reference to ‘e-POWER’ on the opponent’s website shows the use of the sign as a trade mark, since it is referred to as ‘the e‑POWER system’, which is accompanied by a detailed explanation of some of its qualities. In addition, the applicant refers to a European Union trade mark application ‘E‑POWER’ filed by the opponent, which was refused by the EUIPO in 2016. Nonetheless, subsequently, in 2018, the opponent successfully registered ‘e-power’ after it was made clear that the term ‘e-power’ was one step removed from a direct description of the goods. Therefore, whilst considering the applicant’s arguments in this regard, they must be set aside for the reasons stated above. Moreover, it should be recalled that, in the present case, this particular earlier trade mark used as a basis of the opposition is a registered trade mark in the United Kingdom and from this perspective it has been clarified that ‘e-power’ may be allusive but not descriptive (for part of the goods) as the commonly used term in parlance would be ‘electrical vehicles’.

The element ‘VDL’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

Contrary to the opponent’s opinion, in the contested sign there are no dominant elements. Word marks have no dominant elements because by definition they are written in standard typeface. The length of the words or the number of letters is not an issue of dominance but of overall impression. Moreover, the fact that a component of a mark may or may not be considered non-distinctive (or as having a low degree of distinctiveness) has no bearing on the assessment of dominant character.

Visually, the signs coincide in the element ‘E‑POWER’, which is the entirety of the earlier mark and the second element in the contested sign. The signs differ in the first element of the earlier mark, namely the letters ‘VDL’, and in the stylisation of the earlier mark, which is not particularly elaborated or sophisticated and it will not draw the consumer’s attention away from the element it embellishes.

The applicant emphasises the importance of the beginnings of the conflicting signs for the consumer’s perception of the 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) and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 52).

Indeed, even considering that ‘VDL’ is distinctive, the fact remains that the integral reproduction of the element ‘E‑POWER’ in the contested sign and the fact that it constitutes the sole component of the earlier sign outweigh this difference overall.

Therefore, taking into account the above principles and the assertions on the distinctiveness of the signs’ elements, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters that form the coinciding element ‛E‑POWER’, which is the entirety of the earlier mark. The pronunciation differs in the sound of the three letters ‛VDL’ placed at the beginning of the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the element ‘E-POWER’, included in both signs, will be associated with either of the meanings explained above, this coinciding element has a very limited distinctive character. To that extent, the signs are conceptually similar to an average degree.

As the signs have been found similar in all the three aspects 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. According to the explanations and considerations already tackled in section c) of the present decision, the degree of distinctiveness of the earlier mark is very low and has previously explained, the applicant has cast doubt on the validity of the earlier mark. In this regard, it must be recalled that since the earlier mark under examination is a registered mark in the UK, the presumption of its validity applies and therefore it has at least the minimum degree of distinctiveness (24/05/2012, C‑196/11 P, F1‑Live, EU:C:2012:314, § 40‑41).

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. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods are partly identical and partly similar to varying degrees. They target the public at large and business customers who will pay a high degree of attention when purchasing the goods in question.

The signs are visually, aurally and conceptually similar to an average degree. Although the earlier mark as a whole has a very low distinctiveness, it is fully reproduced in the contested sign as its second verbal element. As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive (although very low, in the present case) 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).

Although the distinctive character of an earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102).

While it is true that the more distinctive the earlier mark, the greater will be the likelihood of confusion, the identity and similarity of the goods covered by the respective marks, combined with an average visual, phonetic and conceptual similarity of the signs, suffice to create a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR in spite of the low distinctive character of the earlier mark. Since likelihood of confusion is the specific prerequisite for protection of the earlier mark, that protection applies irrespective of whether the earlier mark has only a weak distinctiveness (12/01/2006, T-147/03, Quantum, EU:T:2006:10).

It is also important to point out that a coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion. However, there may be likelihood of confusion if the overall impression of the marks is similar. In the present case, although the contested sign also contains the distinctive element ‘VDL’, it is only three letters, which are meaningless and as such there is no conceptual difference that could tip the balance.

In this regard, the applicant argues that the element ‘VDL’ identifies the company and that it is a well‑known trade mark. However, the applicant does not support this claim with any evidence.

Furthermore, it must be recalled that the right to a EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

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, 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 goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Indeed, the full reproduction of the verbal element constituting the earlier mark ‘E‑POWER’ in the contested sign is very likely to induce the relevant public to think, for instance, that the applicant’s trade mark refers to a different product line of the opponent’s goods.

Considering all the above, there is a likelihood of confusion on the part of the public, notwithstanding the high degree of attention of the relevant public, because the similarity of the signs is very relevant, especially the reproduction of the only verbal element of the earlier mark in the contested sign. In this regard, 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).

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 3 293 755. It follows that the contested trade mark must be rejected for all the contested goods. The opposition also succeeds as regards the goods found to be similar only to a low degree given the important similarities between the signs.

As the earlier United Kingdom trade mark registration No 3 293 755 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 right 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

Vanessa PAGE

Marta GARCÍA COLLADO

Chantal VAN RIEL

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.