OPPOSITION No B 3 067 528

Bugatti International S.A., 412F route d’Esch, L-1030, Luxembourg, (opponent), represented by Unit4 IP Rechtsanwälte, Jägerstraße 40, 70174, Stuttgart, Germany (professional representative)

a g a i n s t

Benative Clothing (Shanghai) co., ltd., 6th Floor No. 377, Lane 1555 West Jinshajiang Road, Jiading District, Shanghai, People’s Republic of China (applicant), represented by Martin Padulles Capdevila, Calle Enric Granados 21, Pral. 1ª, 08007 Barcelona, Spain (professional representative).

On 28/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 528 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 925 015 for the figurative mark . The opposition is based on European Union trade mark registration No 852 954 for the figurative mark , in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR, and international trade mark registration No 553 248 designating Germany, Spain, Italy, Hungary, Austria and Portugal for the figurative mark , in relation to which the opponent invoked Article 8 (5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient.

The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

According to the opponent, the earlier European Union trade mark registration No 852 954 has a reputation in the European Union and the international trade mark registration No 553 248 has a reputation in the designated countries, namely Germany, Spain, Italy, Hungary, Austria and Portugal.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 29/06/2018. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the EU and in the abovementioned countries prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely vehicles in Class 12.

The opposition is directed against the following goods:

Class 14: Precious metals, unwrought or semi-wrought; jewelry cases [caskets]; charms [jewelry]; jewelry; rings [jewelry]; precious stones; emerald; wristwatches; jewelry findings; works of art of precious metal.

Class 18: Leather, unworked or semi-worked; school bags; travelling trunks; pocket wallets; backpacks; handbags; leather straps; walking sticks; pouch baby carriers; umbrellas

Class 25: Shoes; clothing; scarfs; hats; gloves [clothing]; hosiery; wedding dresses; neckties; children’s clothing; girdles.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 23/05/2019 the opponent submitted the following evidence:

• A press article dated 17/11/2016 from Hagerty (extracted from the website www.hagerty.com on 08/05/2019) titled ‘Bugatti racing — Bugatti Type 35’, stating, inter alia, that ‘Bugatti’s reputation for performance was cemented in automotive history long before it become a brand within the Volkswagen Group’s portfolio — and decades before the outrageous Veyron 16.4 arrived’ (Document 1).

• An article dated 04/05/1998 from FOCUS online (extracted from the website www.focus.de on 08/05/2019) titled ‘BRAND LEGEND Bugatti has something …’), stating, inter alia, that ‘Bugatti stands for elegance and, along with Ferrari, Lamborghini and Rolls-Royce, belongs to the high society of automobiles’ (Document 2).

• An article extracted from the Wikipedia website on 08/05/2019, where the car ‘Bugatti Veyron EB 16.4’ is defined as a ‘mid-engine sports car, designed and developed in Germany by the Volkswagen Group and manufactured in Molsheim, France, by French automobile manufacturer Bugatti’. Moreover, ‘[t]he Super Sport version of the Veyron is recognised by Guinness World Records as the fastest street-legal production car in the world, with a top speed of 431.072 km/h (267.856 mph) … The Veyron Grand Sport Vitesse was the fastest roadster in the world, reaching an averaged top speed of 408.84 km/h (254.04 mph) in a test on 6 April 2013’ (Document 3).

• An article from The New York Times dated 2005 (extracted from the website www.nytimes.com on 08/05/2019) about the high performance achieved by the ‘Bugatti Veyron’ model, stating, inter alia, that the ‘Veyron’s credentials speak for themselves. A 1,001-horsepower two-seater that blasts to 60 miles an hour in 2.5 seconds — and continues pulling all the way to 254 mph — the car is a sheer technological wonder’ (Document 4).

• An article extracted from the website www.topgears.com on 08/05/2019 titled ‘Welcome the new 261mph, 1,479bhp successor to the Veyron’, where the characteristics of a new Bugatti model (i.e. the ‘Bugatti Chiron’) are described. ‘… the Veyron’s reign as the world fastest production car is at an end, and the usurper comes from within. Yes, the £1.9m Chiron retains the Veyron’s fundamental proportions and powertrain, but it’s new in every other conceivable way, and built to bend physics to breaking point’ (Document 5). Moreover, the article shows a photo of a car interior where the figurative mark ‘EB’ is visible in the centre of the driving wheel (Document 5).

• A screenshot from the website www.bloomberg.com showing an article dated 24/08/2018 titled ‘For $5.8 Million, Bugatti’s New Supercar will turn corners faster than ever’. This article is about a new Bugatti car model, the ‘Bugatti Divo’, stating, inter alia, that ‘the Divo has significantly higher performance in terms of lateral acceleration, agility and cornering’ (Document 6)

• An article from The New York Times dated 06/03/2019 (extracted from the website www.nytimes.com on 08/05/2019) titled ‘Geneva Motor Show: a $19 Million Bugatti and Supercars to Spare’. It is about the Bugatti car model ‘La Voiture Noire’ or the ‘Black Car’, which was sold before the opening of the motor show for USD 19 million, ‘reputed to be the highest price ever paid for a new automobile’ (Document 7).

• Screenshots from different websites extracted on 08/05/2019, where photos of Bugatti car models are shown (i.e. ‘Bugatti Veyron’, ‘Bugatti Chiron’, ‘Bugatti Divo’) and where the figurative mark ‘EB’ is visible on the back of the cars and on the steering wheels (Document 8), as in the following examples:

.

• Screenshot from the website www.lifestyle-bugatti.com, extracted on 08/05/2019, showing photos of several clothing articles and fashion accessories on which the figurative trade mark ‘EB’ is attached, such as belts, headgear, coats, bags, watches, foulards (Document 9), as in the following examples:

.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

The opponent submitted articles concerning the success of the Bugatti brand and, in particular, the high performance of and the awards received by Bugatti car models such as ‘Bugatti Veyron’, ‘Bugatti Chiron’ and ‘Bugatti Divo’. Most of the evidence (even if partly outside the relevant period or quite old with respect to the relevant date) provides information about the history of the ‘Bugatti’ mark and the performance of the Bugatti car models rather than the opponent’s figurative trade marks ‘EB’.

The main issue with the evidence submitted relates to the fact that it does not provide sufficient information regarding the recognition of the figurative marks ‘EB’ for the relevant goods because, as said above, most of it relates to other marks, with no reference to the figurative marks ‘EB’. There are also additional deficiencies in the submitted evidence that will be explained below.

The trade mark ‘EB’ is mentioned only in the Wikipedia extract (e.g. ‘Bugatti Veyron EB 16.4’), where the mark is not visible, in some screenshots and in one article submitted by the opponent where the mark ‘EB’ is visible (Documents 5 and 8).

However, the Wikipedia extract does not show the market share held by the figurative trade marks ‘EB’, the intensity of use or the amount invested by the undertaking in promoting the marks or the proportion of the relevant section of the public that knows the marks.

Moreover, the photos shown in the abovementioned Documents 5 and 8, although proving some use of the figurative trade marks ‘EB’, provide no information on the extent of the use.

It is true that these photos show that the Bugatti models mentioned in the articles submitted by the opponent (i.e. Documents 2-7) bear the figurative trade mark ‘EB’, but there is no direct proof regarding the market share or the extent to which these trade marks have been promoted. Most importantly, the evidence does not provide any direct indications of the degree of recognition of the figurative trade marks ‘EB’ by the relevant public. The degree of recognition of the earlier marks cannot be supposed or deduced by means of probabilities, but must be demonstrated by solid and objective evidence provided by the opponent.

Documents 2-7 are press articles (some of which come from an American newspaper) about, as stated above, the trade mark ‘Bugatti’ and Bugatti car models that are not the subject of the present opposition. Moreover, even in relation to the trade mark ‘Bugatti’, they do not give any clear indication regarding the market share or the extent to which it has been promoted.

The photos reproduced in the Document 9 show only a certain use of the marks ‘EB’ for clothing and accessories and not for the goods for which reputation of the figurative marks ‘EB’ has been claimed (i.e. vehicles). Even if the the goods shown in the photos could be considered merchandising articles, this evidence alone is not enough to show that the figurative marks ‘EB’ enjoy a reputation on their own among the relevant public in relation to vehicles. The items of evidence which are most revealing in terms of reputation are the press articles mentioned above, and they mention ‘Bugatti’, not the figurative trade marks, and any reputation of the mark ‘Bugatti’ cannot be automatically transferred to the figurative marks in question.

In assessing reputation, account should be taken, in particular of the market share held by the mark; how intensive, geographically widespread and long-standing the use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

In the present case, the evidence submitted by the opponent lacks objective and reliable data relating to the sales figures and market share or the extent to which the figurative trade marks ‘EB’ have been promoted. Even bearing in mind that the evidence must be looked at in its entirety, avoiding a piecemeal approach, the Opposition Division concludes that the opponent failed to prove that its figurative trade marks have a reputation in the relevant territories.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar it is based on this Article.

The examination of the present opposition continues in relation to the European Union trade mark registration No 852 954 in relation to which the opponent invoked also 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 and services

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

Class 14: Precious metals and their alloys and goods of precious metals or coated therewith, included in class 14; jewellery, precious stones; chronometric and horological instruments; cases for watches [presentation].

Class 18: Leather and imitations of leather, and goods made of these materials and included in class 18; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear; heels; heelpieces for footwear; insoles; non-slipping devices for boots and shoes; shirt yokes; shirt fronts; frames (hat -) [skeletons]; linings (ready-made -) [parts of clothing]; pockets for clothing; cap peaks; welts for boots and shoes; fittings of metal for footwear; footwear soles; footwear uppers; tips for footwear; dress shields; boot uppers; studs for football boots; heelpieces for stockings.

The contested goods are the following:

Class 14: Precious metals, unwrought or semi-wrought; jewelry cases [caskets]; charms [jewelry]; jewelry; rings [jewelry]; precious stones; emerald; wristwatches; jewelry findings; works of art of precious metal.

Class 18: Leather, unworked or semi-worked; school bags; travelling trunks; pocket wallets; backpacks; handbags; leather straps; walking sticks; pouch baby carriers; umbrellas.

Class 25: Shoes; clothing; scarfs; hats; gloves [clothing]; hosiery; wedding dresses; neckties; children’s clothing; girdles.

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. These factors are known as the ‘Canon Criteria’ (29/09/1998, C‑39/97, Canon, EU:C:1998:442).

Contested goods in Class 14

The contested precious metals, unwrought or semi-wrought are identical to the opponent’s precious metals, despite the slightly different wording.

The contested precious stones; jewellery are identically contained in both lists of goods.

The contested emerald is included in the broad category of the opponent’s precious stones. Therefore, they are identical.

The contested wristwatches are included in the broad category of the opponent’s chronometric and horological instruments. Therefore, they are identical.

The contested charms [jewelry]; rings [jewelry] are included in the opponent’s jewellery. Therefore, they are identical.

The contested jewelry cases [caskets] are similar to the opponent’s jewellery, as they usually coincide in producer and relevant public. Furthermore, they are complementary.

The contested works of art of precious metal are similar to the opponent’s jewellery, as both are decorative and, therefore, have the same purpose. They can coincide in producer and distribution channels.

The contested jewelry findings are similar to the opponent’s jewellery, since they are components used to make jewellery items such as clasps or connectors. In that sense, they may coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested goods in Class 18

Walking sticks; umbrellas are identically contained in both lists of goods.

The contested leather, unworked or semi-worked is identical to the opponent’s leather despite the different wordings.

The contested travelling trunks are included in the broad category of the opponent’s trunks. Therefore, they are identical.

The contested school bags; pocket wallets; backpacks; handbags are at least similar to the opponent’s travelling bags as they have the same or similar purposes. Moreover, they usually coincide in producer, relevant public and distribution channels.

The contested leather straps are similar to the opponent’s travelling bags as they usually coincide in producer, relevant public and distribution channels.

The contested pouch baby carriers are similar to a low degree to the opponent’s clothing as they usually coincide in producer, relevant public and distribution channels.

Contested goods in Class 25

The contested clothing is identically contained in both lists of goods.

The contested scarfs, gloves [clothing]; hosiery; wedding dresses; neckties; children’s clothing; girdles are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

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 the public at large and at business customers with specific professional knowledge or expertise regarding raw materials such as leather or precious metals.

The public’s degree of attentiveness of the relevant public in relation to the goods in question may vary from average to relatively high, depending on their nature, the frequency of purchase and their price. For instance, in relation to the relevant goods in Class 14, in its decision of 09/12/2010, R 900/2010‑1, Leo Marco (FIG. MARK) / LEO, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. Therefore, a relatively high degree of attention on the part of the consumer may be assumed.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is 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 mark is a figurative mark composed of a set of lines that are likely to be perceived as a stylised reversed upper-case letter ‘E’ and a stylised upper-case letter ‘B’ sharing their right and left stems respectively.

The contested sign is a figurative mark composed of the verbal element ‘BENATIVE’, written in quite standard upper-case letters, and, above this verbal element, a figurative element that is likely to be perceived as a stylised reversed upper-case letter ‘B’ and a stylised upper-case letter ‘E’ sharing their right and left stems respectively.

The verbal element ‘BENATIVE’ of the contested sign, in principle, has no meaning at least for a part of the relevant public and, therefore, is considered distinctive in relation to the relevant goods.

The opponent claimed that the English-speaking part of the public will split up the verbal element ‘BENATIVE’ as it will recognise the English words ‘BE’ and ‘NATIVE’, and that for these reasons the expression ‘BE NATIVE’ as a whole lacks distinctiveness due to its merely descriptive meaning and promotional message.

Contrary to the opponent’s opinion, the Opposition Division considers that it would be too artificial for the English-speaking part of the public to split up the expression ‘BENATIVE’. However, even if part of the English-speaking public were to split up the verbal element ‘BENATIVE’ into ‘BE NATIVE’, there would not be any reason to consider this expression non-distinctive in relation to the relevant goods, as it does not enable the public concerned to discern immediately and without further reflection the description of one of their characteristics. In particular, the word ‘BE’ is the imperative form of the verb ‘to be’ and the word ‘NATIVE’ refers to a native of a particular country or region, that is, ‘someone who was born in that country or region’ (information extracted from Collins Dictionary on 15/10/2019 at https://www.collinsdictionary.com/es/diccionario/ingles/native). As a whole, the expression ‘BE NATIVE’ refers to the fact of being born in a particular country or region. Therefore, contrary to the opponent’s arguments, the English-speaking part of the public will not perceive any laudatory or promotional connotation in this expression nor any descriptive meaning in relation to the goods at issue.

The opponent refers to previous decisions of the Office and of the General Court to support its arguments.

In the present case, the previous cases referred to by the opponent in order to demonstrate the lack of distinctiveness of the word element ‘BENATIVE’ are not relevant to the present proceedings. These cases refer to different situations, where the marks were composed of the element ‘BE’ plus another word, such as ‘HAPPY’, ‘NATURAL’ and ‘RELAXED’, that, as a whole, were found to have a descriptive or laudatory/promotional meaning in relation to the goods/services, which is not the case in the present case.

In view of the above, the opponent’s claim regarding the lack of distinctiveness of the element ‘BENATIVE’ is unfounded.

The stylised letters ‘EB’ of the earlier mark as well as the two-letter element ‘BE’ of the contested sign are distinctive as they have no particular meaning in relation to the contested goods and services.

The earlier mark has no element that could be considered more dominant than other elements.

In the contested sign, the verbal element ‘BENATIVE’ is smaller than the larger figurative element resembling the letters ‘BE’, which is considered the dominant element. However, contrary to the opponent’s opinion, the verbal element ‘BENATIVE’ will not go unnoticed by the relevant consumers, as it still has a certain size and, consequentially, an impact on consumers. Furthermore, the stylised letters ‘BE’ will be perceived merely as the first two letters of the verbal element ‘BENATIVE’ depicted below them. Therefore, to some extent this two-letter element will be perceived as being ancillary to the verbal element.

Additionally, the two-letter element of the contested sign will be perceived rather as a figurative element, considering that the letters are particularly stylised and not easy to read since they are merged together and the ‘B’ faces backwards. When signs consist of both verbal and figurative components, the impact of the figurative elements on the consumer is, in principle, less than that of the verbal elements. 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; 19/12/2011, R 233/2011‑4, BEST TONE (FIG MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59).

Visually, the signs coincide in the letters ‘B’ and ‘E’. However, they differ in their order, namely ‘EB’ in the earlier mark and reversed as ‘BE’ in the contested sign. Moreover, apart from the fact that both the letters ‘EB’ and the letters ‘BE’ (of the earlier mark and contested sign respectively) share one stem, there are significant visual differences in the graphical structure of these letters. In the earlier mark, the horizontal and vertical stems of the letter ‘E’ have rectangular edges, while in the contested sign the horizontal and vertical stems of the letter ‘E’ have rounded edges.

Moreover, the earlier mark has two bold black lines (i.e. vertical and horizontal) that cross in the centre, while the figurative element of the contested sign has a thin horizontal line and a bolder vertical line passing through it. Additionally, the thickness of the lines of the earlier mark is uniform, while in the contested sign the thickness of the lines of the figurative element ‘BE’ varies greatly. Furthermore, the letters ‘BE’ of the contested sign mark are more elongated and slenderer than the letters ‘EB’ of the earlier mark.

The signs differ also in the distinctive verbal element ‘BENATIVE’ of the contested sign, which, despite being less dominant, will not go unnoticed by the relevant public for the reasons explained above.

Therefore, the signs are visually similar to a very low degree.

Aurally, the earlier mark will be pronounced by the names of the letters ‘E’ and ‘B’, in that order, in the different alphabets of the relevant languages. The contested sign will be referred to primarily by the verbal element ‘BENATIVE’ by the majority of the relevant public because it is much easier to read than the two-letters element with the reversed ‘B’ and because, in any case, the consumers will instantly perceive the two letters ‘BE’ as the initial letters of the word element ‘BENATIVE’ place below.

In the scenario most favourable to the opponent, both the two-letter element and the verbal element of the contested sign would be pronounced by a part of the public. However, in this case, the pronunciation of the two letters ‘BE’ would be in reverse order with respect to those of the earlier mark ‘EB’, or the former would even be pronounced as the word/syllable ‘BE’, which leads to a very low degree of aural similarity with the earlier mark.

Consequently, the signs are aurally similar to a very low degree for this part of the public, or dissimilar for most of the relevant public that will not pronounce the two-letter element ‘BE’ of the contested sign.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The letters ‘EB’ of the earlier mark are meaningless. The contested sign conveys the meaning of the verbal element ‘BENATIVE’ for the part of the relevant public that will perceive it as the English expression ‘BE NATIVE’, and the two-letter element ‘BE’ could also be perceived as the word ‘BE’ by this part of the public. Therefore, the signs are conceptually not similar.

For a significant part of the public, neither of the marks has a meaning (because the element ‘BENATIVE’ is not understood) and therefore a conceptual comparison is not possible.

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 trade mark has a reputation in the European Union in connection with vehicles.

The goods for which the opponent claimed reputation of its earlier mark (i.e. vehicles) are dissimilar to all the contested goods in Classes 14, 18 and 25 as they differ in their nature, purpose, distribution channels, producers and method of use and they are neither in competition nor complementary.

Therefore, the claim is not relevant under the assessment of the likelihood of confusion, which requires that the goods be identical or similar. In any case, as seen above, the opponent has not proven that the earlier mark is reputed, even for vehicles.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of 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 normal.

5. Global assessment, other arguments and conclusion

The goods are identical or similar and target the public at large and business professionals, and the degree of attention varies from average to relatively high. Furthermore, the earlier mark has an average degree of distinctiveness.

As seen above, the earlier mark is a two-letter mark and, therefore, it is considered a short sign, while the contested sign is composed of a two-letter element and the additional verbal element ‘BENATIVE’.

The marks have been found to be visually similar to a very low degree, aurally dissimilar or similar to a very low degree and conceptually not similar or conceptually not comparable.

The differences between the signs are not minor and prevail in the overall impression of the signs, making the consumer able to safely distinguish between the signs.

Considering all the above, even though the goods have been found identical or similar to varying degrees, 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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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.

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 120 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Article 18(1)(c) EUTMIR (former Rule 94(7)(d) EUTMIR, in force before 01/10/2017).

The Opposition Division

Catherine MEDINA

Angela DI BLASIO

María del Carmen COBOS PALOMO

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.