OPPOSITION No B 3 063 314

We Buy Any Car Limited, Pennine House, Zebra Court, White Moss View, M24 1UN, Middleton, Manchester, United Kingdom (opponent), represented by HGF Limited, 4th Floor, Merchant Exchange Building, 17-19 Whitworth Street West, M1 5WG, Manchester, United Kingdom (professional representative)

a g a i n s t

Sellanycar.com (FZE), SAIF Lounge, P.O Box 120123, Sharjah, United Arab Emirates (applicant), represented by Gilbey Legal, 43 Boulevard Haussmann, 75009 Paris, France (professional representative).

On 02/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 314 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 922 522 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 and services of European Union trade mark application No 17 922 522, namely against all the goods and services in Classes 12 and 37. The opposition is based on, inter alia, European Union trade mark registration No 13 336 391. The opponent invoked Article 8(1)(b), Article 8(5) and Article 8(4) 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 13 336 391 which is not subject to the use obligation.

1. The goods and services

The goods and services on which the opposition is based are, among others, the following:

Class 12: Motor vehicles; parts and fittings for the aforesaid goods.

Class 37: Maintenance, servicing and repair of motor vehicles; valeting, cleaning and upholstering of motor vehicles; motor vehicle spraying services and repair of vehicle body work; advisory, information and consultancy services relating to all the aforesaid.

The contested goods and services are the following:

Class 12: Motor vehicles; parts and fittings for the aforesaid goods.

Class 37: Maintenance, servicing and repair of motor vehicles; valeting, cleaning and upholstering of motor vehicles; motor vehicle spraying services and repair of vehicle body work; advisory, information and consultancy services relating to all the aforesaid.

Contested goods and services in Classes 12 and 37

The contested goods and services under comparison are identical as they are identically reproduced in both lists of goods and services.

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 and services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise in particular in the car industry, car repair and maintenance sectors.

The degree of attention may be average or higher than average, depending on the specialised nature of the goods and services, the frequency of purchase and their price. In particular, as far as vehicles are concerned, taking into consideration the price of certain types of 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 vehicle, either new or second-hand, in the same way as they would buy articles purchased on a daily basis.

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.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, because the words forming the signs are meaningful for this part of the public.

The expression ‘buy any car’ included in both of the signs will be perceived as conveying the message that we (the company) buy any car (from the consumers). The additional word ‘we’ included at the beginning of the earlier mark refers to first person plural pronoun. Given that in the combination with ‘webuyanycar’ the word ‘we’ merely expresses an association of the speaker, and is used to replace the noun that is subject of their clause and also since it is very short, the public will perceive it as having a less impact than the words that follow

The ending ‘.com’ included in the marks is widely known and used throughout the relevant territory as a top-level domain originally corresponding to commercial sites on the internet.

The identically contained expression ‘buyanycar.com’ present in both signs is not particularly distinctive in relation to the relevant goods and services at hand, but given that both signs will be seen as composed of elements that relay the same concepts, which only differ inasmuch as the word ‘we’, the elements of both signs are on an equal footing in terms of their distinctiveness. Consequently, it is the difference in the figurative elements of the signs that is decisive in this case.

The figurative elements of the earlier mark, namely depictions of silhouettes of different cars in violet, red, blue, pink and yellow colour are non-distinctive in relation to the relevant goods and services at hand (which are all cars related). The same applies to the figurative element of the contested mark, which represents a product tag in orange colour with a picture of a black car. It is non-distinctive in relation to the goods and services at hand. The use of the colours green and black in the earlier mark and orange and black in the contested mark have a purely decorative nature and have therefore a very low, if any, degree of distinctiveness.

The marks have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘buyanycar.com’, taking into account the difference in the title case of the letters in the contested mark. Another common element between the signs is that the letters are represented in two colours. Although, the signs differ in the additional word ‘we’, placed at the beginning of the earlier mark, this element is substantially shorter than the coinciding wording ‘buyanycar.com’. The difference in the figurative elements of the signs and the colours of the letters have a low weight in the comparison due to their non-distinctiveness.

Therefore, the signs are visually similar to a high degree.

Aurally, the words ‘buy any car’ and the part ‘.com’ (if pronounced at all) will be pronounced identically. Although the pronunciations differ in the sound of the word ‘we’, the reduced impact of this difference owing to the fact that it is merely a personal pronoun in the expression ‘buyanycar’, has to be taken into consideration.

The marks are considered aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both marks will be perceived as referring to the concept ‘buy any car. com’. The only difference is in the additional word ‘we’ in the earlier mark and the figurative elements which are however less distinctive or non-distinctive in relation to the relevant goods and services at hand.

Therefore, the signs are similar to a high degree.

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 a meaning for the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as somehow below average for all the relevant goods and services.

5. 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).

The goods and services are identical. The signs are similar to a high degree from all three aspects of the comparison (visual, aural, conceptual), as they are composed of almost identical verbal elements, the only difference in them being in the additional word ‘we’ in the earlier mark and the different figurative elements and colours of the elements forming the marks. Nevertheless, that additional ‘we’ would have a minimal impact on the overall perception of the sign, since it will be seen as a personal pronoun placed at the beginning of the expression ‘buyanycar.com’ and it is also much shorter than the common element.

The distinctiveness of the earlier mark must be seen as below average for all the relevant goods and services.

In its observations, the applicant argues that the words common to the marks ‘buyanycar’ are directly descriptive of an activity relating to the automobile trade and are devoid of any distinctive character. In support of its argument the applicant refers to the trade marks formed by the words ‘buy any car’ which were refused by the Office.

The fact that the distinctiveness of the earlier mark is below average does not of itself prevent the opposition from succeeding. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C 39/97, Canon, EU:C:1998:442), this is only one of a number of elements entering into that assessment, and it is established case-law that, even in a case involving an earlier mark with a weak distinctive character, 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).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 13 336 391. It follows that the contested trade mark must be rejected for all the contested goods and services.

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 EUTM No 13 336 391 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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) and the evidence of proof of use of the earlier marks for which proof of use has been requested.

Also, 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 grounds of the opposition, namely Articles 8(4) and (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 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

Oana-Alina STURZA

Janja FELC

Michaela SIMANDLOVA

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.