OPPOSITION No B 3 060 638

S.A.S.I.C. - S.A. Santucci Sicfa Reunis, 6 rue Pierre Curie, 92400 Courbevoie, France (opponent), represented by Casalonga Alicante, S.L., Avenida Maisonnave 41-6 C, 03003 Alicante, Spain (professional representative)

a g a i n s t

ZF Friedrichshafen AG, Löwentaler Str 20, 88046 Friedrichshafen, Germany (applicant).

On 24/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 638 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 17 916 611 for the word mark ‘cCAB’. The opposition is based on French trade mark registration No 4 381 250 for the word mark ‘SICAB’. 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 7: Seals [parts of engines]; pistons [parts of engines]; pumps [parts of machines or engines]; valves [parts of motors]; spark plugs; electric ignition coils; electronic ignitions for vehicles; spark plug wires; ignition cables for motor vehicles.

Class 9: Apparatus and instruments for conducting, distributing, transforming, accumulating, regulating or controlling electric current; electric cables and wires; high voltage cables; electrical relays; electric coils; probes; apparatus for recharging electric accumulators; ignition batteries; electric batteries; starter cables for motors; ignition cables; ignition batteries.

Class 12: Motor vehicles, including industrial vehicles, trucks and trailers, parts of motor vehicles (except for engines other than for land vehicles, electric locks, heaters, air conditioning and lighting, non-metallic and non-electric locks); engines for land vehicles.

The contested goods are the following:

Class 9: Software for operating active cabin suspensions for motor vehicles; electronic control and regulating apparatus for operating active cabin suspensions for motor vehicles.

Class 12: Cabin suspensions for motor vehicles, in particular for lorries; suspension struts for supporting motor vehicle cabs; shock absorbers for supporting motor vehicle cabs; springs for supporting motor vehicle cabs.

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.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘in particular’, used in the applicant’s list of goods, and the term ‘including’ used in the opponent’s list of goods, indicate 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).

The opponent’s parts of motor vehicles (except for engines other than for land vehicles, electric locks, heaters, air conditioning and lighting, non-metallic and non-electric locks) in Class 12, is a broad category and as such, includes the contested goods in Class 12, namely, cabin suspensions for motor vehicles, in particular for lorries; suspension struts for supporting motor vehicle cabs; shock absorbers for supporting motor vehicle cabs; springs for supporting motor vehicle cabs. Therefore, they are identical.

Considering that the opponent’s broad category of goods in Class 12 includes cabin suspensions for motor vehicles, and that the contested goods in Class 9 are closely connected with cabin suspensions for motor vehicles, these goods are similar at least to a low degree; they can be made by the same companies and are complementary (i.e. one is indispensable for the use of the other).

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 at least to a low degree are specialised goods directed at business customers (i.e. vehicle manufacturers) with specific professional knowledge or expertise. Taking into consideration the price and sophistication of the relevant goods, the degree of attention is considered to be high.

c) The signs

SICAB	cCAB
Earlier trade mark	Contested sign

The relevant territory is France.

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).

Both signs are rather short single-word signs that have no meaning for the relevant public and are therefore distinctive. While the earlier mark is depicted in upper-case letters, in the contested sign one letter is depicted in lower case and the remaining ones in upper case. The signs coincide in their last three letters, namely ‘-CAB’ however they differ in their beginnings, namely ‘SI-’ and ‘c’, and the number of letters the signs consist of, namely five and four, respectively.

As regards the letter-case used in the signs, it is noted that in the case of word marks, it is the word as such that is protected and not its written form. The case in which word marks are written is thus irrelevant (27/01/2010, T‑331/08, Solfrutta, EU:T:2010:23, § 16).

On the other hand, the shorter a sign, the more easily the public can perceive all its individual elements, thus, small differences may frequently lead in short words to a different overall impression (06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48; 20/04/2005, T‑273/02, Calpico, EU:T:2005:134, § 39). Furthermore, the initial letters of the signs are different. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part), the one that first catches the attention of the reader.

Visually, due to the different beginnings (visually dissimilar letters ‘SI’ versus ‘c’) and the different length of the signs (five letters versus four letters) that are immediately noticeable in these short signs, the signs are similar only to a low degree. The similarity arises from the inclusion of the same letters ‘CAB’ at the end of both signs.

Aurally, the signs will be pronounced as ‘SI/CAB’ versus ‘Sé/CAB’ or simply as ‘CAB’, due to the fact that the first two letters of the contested sign are identical. In the scenario where the contested sign is pronounced as ‘Sé/CAB’, the degree of aural similarity of the signs is high, however in the case of the contested sign being pronounced as ‘CAB’, the degree of similarity is low.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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

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). This principle of interdependence is crucial to the analysis of likelihood of confusion.

In the present case, the goods are partly identical and partly similar to at least a low degree. The degree of attention paid by the relevant professional public, in relation to the goods, is high. The distinctiveness of the earlier mark is normal.

The signs are visually similar to a low degree, conceptually not comparable and aurally, depending on the way the contested sign is pronounced, may be similar to a high or low degree. However, considering the nature of the goods at issue, even though it cannot be entirely excluded that the purchase of these goods may be initiated on the basis of an aural recommendation, the marks at issue will generally be perceived visually prior to purchase. This reduces the importance of the aural similarity between the signs.

Considering all the above, in particular the high level of attention of the relevant public, the fact that the marks at issue are short (allowing the relevant public to notice the differences between them more easily), and taking into account the aforementioned principle of interdependence, the Opposition Division considers it unlikely that the relevant professional consumers will believe, even for identical goods, that they come from the same or economically linked undertakings (20/09/2018, T‑668/17, Eico/MAICO, EU:T:2018:567, § 44). Therefore, and in the absence of any arguments from the opponent that could convince the Opposition Division otherwise, it is considered that there is no risk of confusion between the two marks on the part of the relevant 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

Helen Louise MOSBACK

Vita VORONECKAITE

Carlos MATEO PÉREZ

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.