OPPOSITION No B 3 062 776

Advanced Engine Management, Inc., 2205 W. 126th Street Unit A, 90250, Hawthorne, United States of America (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)

a g a i n s t

Aem Elektrik Motorlari Sanayi Ve Ticaret Anonim Sirketi, Taspinar Kasabasi, Yavuzselim Mahallesi, Sümrü Sokak No: 61/1, Aksaray, Turkey (applicant), represented by Silex Ip, Poeta Joan Maragall 9, Esc. Izq. 3º Izq., 28020 Madrid, Spain. (professional representative).

On 26/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 776 is upheld for all the contested goods.

2. European Union trade mark application No 17 898 620 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 17 898 620 . The opposition is based on, inter alia, European Union trade mark registration No 14 008 783 . The opponent invoked Article 8(1)(b) and Article 8(5) 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 European Union trade mark registration No 14 008 783.

1. The goods

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

Class 7: Filters for engines; filters for vehicle engines; automotive intake manifolds; intakes for vehicle engines; intake kits for vehicle engines comprised of intake pipes, air filters, brackets and mounts; fuel kits for vehicle engines comprised of fuel rails, fuel pressure regulators and fuel filters; vehicle engine fuel rails; adjustable fuel pressure regulators for vehicle engines; vehicle fuel pumps; engine fuel pumps.

The contested goods are the following:

Class 7: Engines and motors, other than for land vehicles, parts and fittings therefor, hydraulic and pneumatic controls for engines and motors, brakes other than for vehicles, brake linings for engines, crankshafts, transmission gears for machines, cylinders for engines, pistons for engines, turbines, not for land vehicles, filters for engines and motors, oil, air and fuel filters for land vehicle engines, exhausts for land vehicle engines, exhaust manifolds for land vehicle engines; engine cylinders for land vehicles, engine cylinder heads for land vehicles, pistons for land vehicle engines, carburetors for land vehicles, fuel conversion apparatus for land vehicle engines, injectors for land vehicle engines, fuel economisers for land vehicle engines, pumps for land vehicle engines, valves for land vehicle engines, starters for motors and engines, dynamos for land vehicle engines, sparking plugs for land vehicle engines; alternators; current generators; electric generators; current generators operated with solar energy.

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 filters for engines and motors, oil, air and fuel filters for land vehicle engines; pumps for land vehicle engines are identical to the opponent’s filters for engines; filters for vehicle engines; fuel filters; engine fuel pumps respectively either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested engines and motors, other than for land vehicles are similar to the opponent’s engine fuel pumps as they usually coincide in producer and relevant public. Furthermore they are complementary.

The remaining contested parts and fittings therefor [Engines and motors, other than for land vehicles], hydraulic and pneumatic controls for engines and motors, brakes other than for vehicles, brake linings for engines, crankshafts, transmission gears for machines, cylinders for engines, pistons for engines, turbines, not for land vehicles, exhausts for land vehicle engines, exhaust manifolds for land vehicle engines; engine cylinders for land vehicles, engine cylinder heads for land vehicles, pistons for land vehicle engines, carburetors for land vehicles, fuel conversion apparatus for land vehicle engines, injectors for land vehicle engines, fuel economisers for land vehicle engines, valves for land vehicle engines, starters for motors and engines, dynamos for land vehicle engines, sparking plugs for land vehicle engines; alternators; current generators; electric generators; current generators operated with solar energy can all be parts of engines and motors in a similar way as some of the opponent’s goods in class 7, i.e. engine fuel pumps; filters for engines. They can coincide in manufacture, distribution channels and public. The goods can be complementary. It is therefore considered, that the contested goods are at least similar.

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 are directed at business customers with specific professional knowledge or expertise.

The degree of attention is average or above average depending on the specific technical nature of each good.

3. The signs

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier figurative mark contains three stylised letters, AEM. Given the degree of stylisation of the first letter A, it however cannot be excluded, that part of the public would perceive this letter as letter L (for example the Greek or Bulgarian public). For the purpose of economy the Opposition Division will focus on its examination on the public that would perceive the first letter as letter A.

As the letters in the earlier mark have no other meaning for the public than the letters of the alphabet, they are therefore distinctive in respect of the goods. The mark has no elements that are more dominant than others.

The contested figurative mark contains three large red underlined letters AEM and underneath them the words ELECTRIC MOTORS in much smaller typeface. To the left is placed a red arch-like device element.

The letters AEM have no other meaning for the public except that of a combination of these letters of an alphabet and are, therefore, distinctive.

Although the figurative element of the contested mark is fanciful and must be seen as inherently distinctive for the goods at issue, 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).

The words ELECTRIC MOTORS are basic English words understood throughout the relevant territory by the specialist customers as referring to a type of motors. Considering that all the goods are engines and their parts, these words are considered to be non-distinctive as they refer to the characteristics of these goods. Considering the size of these words, they play a secondary role I the overall impression of the contested sign, in comparison with the other elements of the mark which have to be considered co-dominant.

Visually, the signs coincide in the letters EM of the earlier mark and the first and dominant word element of the contested sign. The signs also coincide in the outline of the first letter A. The marks differ in the stylisation of all these letters.

The marks also differ in the distinctive figurative element of the contested mark which has a less strong impact than its dominant word element, and in the non-distinctive word elements ELECTRIC MOTORS of the contested mark which were found non-distinctive and in any case have a lesser weight in the visual impression created by the sign as a whole, for the reasons given above.

Therefore, the signs are visually similar to an average 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 A-E-M, present identically in both signs. The words ELECTRIC MOTORS in the contested sign were found non-distinctive and do not influence the aural comparison therefore. The impact of these aurally differentiating elements is further reduced by the fact that a part of the public may skip them from the pronunciation when referring to the contested sign, given the less important role of these words on the visual level.

Therefore, the signs are aurally identical.

Conceptually, making reference to the previous examination of the distinctiveness and meaning of the elements, the signs coincide conceptually in the element AEM. However, the letter combination has no other meaning than a sequence of letters, while the remaining elements are non-distinctive. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods have been found identical and similar. The earlier mark and the contested sign have been found to be similar on account of the letter sequence AEM which they have in common as a readily perceptible and distinctive element. The difference lies in the stylisation of these letters in the marks, which does not however alter the way that these letters are perceived by the relevant public. The differences in typeface, the figurative element of the contested mark, or the additional (non-distinctive) word elements cannot outweigh the similarity provided by the coinciding identical letters.

It is considered that the similarities between the signs established above are sufficient to cause the public to believe that the conflicting goods, which are identical and similar, come from the same undertaking or economically linked undertakings.

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).

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 covered are from the same or economically linked undertakings.

Moreover, it is common in many industry sectors for the same distinctive element to be configured in various ways according to the type of products that it covers and for the same undertaking to use a sub-brand to distinguish various production lines. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand or 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).

Considering all the above, there is a likelihood of confusion on the part of the public that will perceive the first letter of the earlier mark as the letter A. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 008 783. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right, EUTM No 14 008 783, 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).

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(5) EUTMR.

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

Rosario GURRIERI

Erkki Münter

Christophe DU JARDIN

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.