OPPOSITION No B 3 077 260

Mcon Czech Republic s.r.o., Prvniho pluku 347/12a, 18600 Prague, Czech Republic (opponent), represented by Arroba GbR, Bahnhofstraße 2, 65307 Bad Schwalbach, Germany (professional representative)

a g a i n s t

Careis, 9 Avenue des Chênes Verts, Appartement 29, Résidence Orchidée, 83150 Bandol, France (applicant), represented by Deprez Guignot & Associes, 21 rue Clément Marot, 75008 Paris, France (professional representative).

On 13/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 077 260 is upheld for all the contested services.

2. European Union trade mark application No 17 973 603 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 973 603 for the word mark ‘CAREIS’. The opposition is based on international trade mark registration No 1 423 282 for the word mark ‘cardess’, designating the European Union. 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.

1. The goods and services

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

Class 9: Computer software; data recorded electronically.

Class 35: Advertising; business management; business administration; office functions; marketing; promotion services; market research; cost analysis services; arranging contracts for the purchase and sale of goods and services; arranging contracts, for others, for the buying and selling of goods and services; arranging trade and business contacts; arranging commercial transactions for others; compilation of data in computer databases; systemisation of data in computer databases; updating and maintenance of data in computer databases; maintenance of databases relating to vehicles, vehicle services and vehicle parts; operating on-line marketplaces for sellers of vehicles and vehicle accessories; arranging of contracts for the buying and selling of vehicles and vehicle accessories; collection and provision of business information relating to statistics, cost-price analyses and price comparisons, in particular information and expert opinions relating to companies and business on vehicles, spare parts, wear parts, improvement parts; providing information via the internet relating to the purchase and/or sale of cars; business project management services for advertising and presentation of goods, services and businesses by means of all media, in particular on the internet; advertising for the sale of cars and the purchase of cars via the internet; business and organisation consultancy; advisory services in the field of advertising, marketing and sales promotion; conducting interactive virtual auctions via the internet; organization of promotional events and trade fairs and conducting auctions; arranging and rental of advertising space; procurement services for others [purchasing goods and services for other businesses]; administrative processing of orders, presentation of goods and services; advertising by mail order via e-mail newsletter or mobile messaging; providing an e-commerce platform on the internet; providing internet portals for online shopping and ordering services.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; processing payments for the purchase of goods and services via an electronic communications network; brokerage; providing insurance information; preparation of financial analysis; issuing of financial information; granting of loans; insurance brokerage; arranging the provision of finance; insurance consultancy; financial advice and consultancy services; financial consultancy, in particular with regard to money transactions, money exchange transactions, credit brokerage and leasing; estimation of repair costs; consumer credit consultancy.

Class 37: Building construction; installation services; maintenance and repair of vehicles; repair of vehicles in the context of roadside assistance; information relating to vehicle repairs, vehicle maintenance and vehicle inspections; consultancy relating to vehicle repairs, vehicle maintenance and vehicle inspections.

The contested services are, after a limitation made by the applicant on 06/03/2019, the following:

Class 35: The bringing together, for the benefit of others, of vehicles, and parts and accessories therefor (excluding the transport thereof), enabling customers to view and purchase those goods; advertising in the automotive sector, public relations services, radio and television advertising for motor vehicles; retailing and online sale of motor vehicles, replacement parts for motor vehicles and accessories for motor vehicles, sale of used vehicles of all brands; promotion (advertising) and marketing of motor vehicles; presentation of goods on communication media for the sale and/or rental, maintenance and/or repair of used motor vehicles; automobile dealerships.

Class 37: Automobile reconditioning services; Inspection of motor vehicles and parts therefor prior to conducting maintenance and repair work, automotive maintenance and repair, Information relating to car repair, Vehicle breakdown assistance (repair), automotive cleaning; Vehicle wash; Vehicle greasing, Rebuilding motor vehicle engines that have been worn or partially destroyed; Service for auto-vehicles; Installation of replacement parts for motor vehicles.

Class 41: Providing of training in the automotive sector; providing of training and education relating to means of locomotion by land; organisation of events for cultural or educational purposes in the automotive and mobility sector; publication of training manuals (handbooks) in the automotive sector, publication of books, journals in the automotive sector; online publication of electronic books and journals in the automotive sector.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific services 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 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 services in Class 35

The contested advertising in the automotive sector, public relations services, radio and television advertising for motor vehicles; promotion (advertising) and marketing of motor vehicles; presentation of goods on communication media for the sale and/or rental, maintenance and/or repair of used motor vehicles are included in the opponent’s broad category of advertising. Therefore, they are identical.

The contested the bringing together, for the benefit of others, of vehicles, and parts and accessories therefor (excluding the transport thereof), enabling customers to view and purchase those goods; retailing and online sale of motor vehicles, replacement parts for motor vehicles and accessories for motor vehicles, sale of used vehicles of all brands; automobile dealerships are retail services that are similar to a low degree to the opponent’s maintenance and repair of vehicles in Class 37. The services under comparison may be provided by the same undertakings through the same distribution channels. Indeed, it is common for companies that sell vehicles and spare parts thereof to also provide the corresponding repair and maintenance services. They also target the same relevant public.

Contested services in Class 37

Information relating to car repair, vehicle breakdown assistance (repair), are identically included in both lists (including synonyms).

The contested automobile reconditioning services; inspection of motor vehicles and parts therefor prior to conducting maintenance and repair work, automotive maintenance and repair; vehicle greasing, rebuilding motor vehicle engines that have been worn or partially destroyed; service for auto-vehicles; installation of replacement parts for motor vehicles are included in the broad category of, or overlap with, the opponent’s maintenance and repair of vehicles. Therefore, they are identical.

The contested vehicle wash; information relating to automotive cleaning are similar to the opponent’s maintenance and repair of vehicles; information relating to vehicle repairs, vehicle maintenance and vehicle inspections. These services target the same relevant public (car owners) and share distribution channels. Furthermore, they can be provided by the same undertakings as companies that offer maintenance and vehicle repair, which may also provide other related services, such as vehicle washing.

Contested services in Class 41

The contested providing of training in the automotive sector; providing of training and education relating to means of locomotion by land are similar to the opponent’s computer software in Class 9. In this regard, computer software includes downloadable software applications (apps), which are nowadays essential for the provision of training and educational services, as a means of interactive training. Therefore, they may originate from the same producer/provider and be sold through the same distribution channels for the same relevant public. Consequently, these goods and services are similar.

The contested organisation of events for cultural or educational purposes in the automotive and mobility sector are at least similar to a low degree to the opponent’s organization of promotional events and trade fairs in Class 35. The applicant argued that these services cannot be similar on the ground that they all relate to organising and events. However, in the Opposition Division’s view, regardless of the possible differing specific purposes of the events and trade fairs, the nature of the services under comparison is the same. Furthermore, they can be provided by the same undertakings and can have the same channels of distribution.

The contested publication of training manuals (handbooks) in the automotive sector, publication of books, journals in the automotive sector; online publication of electronic books and journals in the automotive sector are publishing services provided by publishing houses. Publication/publishing services concern the activity of making text (content) available to the general public and include copying, editing, production and printing (and its electronic equivalents). The contested publishing services include electronic publishing as well as editing books or magazines that are mostly destined to be read on a screen (e.g. computer, tablet). The opponent’s computer software in Class 9 includes publishing software and desktop publishing software specifically intended for editing, layout and publishing of content in electronic form allowing individuals, businesses and other organisations to self-publish without the expense of commercial printing. As a consequence, although these goods and services typically have a different commercial origin, they can serve the same purpose (i.e. editing, layout and publishing in electronic form) and target the same public, for example, authors or companies seeking user-friendly publishing solutions. Furthermore, given that an author or company can choose to purchase desktop publishing software and self-publish instead of resorting to electronic publishing services, the goods and services at issue are in competition. Therefore, they are similar to a low degree.

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 or similar to varying degrees are partly directed exclusively at business customers with specific professional knowledge or expertise (e.g. advertising services) and partly at both the general public and business customers with specific professional knowledge or expertise (e.g. automobile dealerships).

The public’s degree of attentiveness may vary from average (such as in relation to vehicle wash services) to high (such as in relation to retail services of vehicles). Taking into consideration the price of cars, 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, 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).

3. The signs

cardess	CAREIS
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division notes that, since both signs contain the letter string ‘car’, it cannot be excluded that part of the public in the European Union, such as some English-speakers, will perceive the sequence of letters ‘car’ as referring to the English word for ‘a motor vehicle’ (information extracted from Collins English Dictionary on 08/07/2020 at https://www.collinsdictionary.com/dictionary/english/car). As for the part of the public that will dissect the verbal elements, ‘car’ is weakly distinctive in connection with at least some of the relevant services, such as retail of vehicles in Class 35 and car repair services in Class 37. However, other parts of the public will not dissect the signs and simply perceive both signs as comprising meaningless terms. The Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the signs in question are meaningless, such as at least a significant part of the Spanish-speaking public, as this may increase the likelihood of confusion in the present case, and therefore, is the best case scenario for the opponent.

As mentioned above, the signs are meaningless for the public under analysis and, therefore, distinctive to an average degree.

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, both signs coincide in their first three letters, ‘CAR’, in the letter ‘E’ (placed in fifth and fourth position in the signs respectively) and in the final letter ‘S’. However, the marks differ in the fourth and sixth letter of the earlier mark, ‘D’ and ‘S’, and the letter ‘I’ of the contested sign. The signs only differ in the letters that are located in the middle and towards the end of the signs. As consumers tend to focus on the initial parts of signs, the fact that they have identical beginnings ‘CAR’, as well as the same last letter ‘S’, makes the differing letters located in the middle less noticeable. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of their initial letters ‘CAR’ and in the sound of the final letter ‘S’, present identically in both signs. The pronunciation differs in the sound of the letters ‘D’ and ‘I’ since the double ‘S’ of the earlier mark is not likely to be pronounced. The signs have the same rhythm and intonation. Therefore, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public under analysis 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.

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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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 (recital 8 of the EUTMR). 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).

In the present case, the goods and services have been found partly identical and partly similar (to various degrees) and they target the professional public only or both the general public and professionals. The degree of attention varies from average to higher than average.

For the public under analysis, the signs have been found visually similar to an average degree and aurally similar to a high degree. Furthermore, the earlier mark has a normal distinctiveness and the signs have no conceptual meaning that would help the consumer to distinguish them.

Taking all the relevant factors into consideration, the similarities between the signs at issue are not counteracted by the differences between them, which are limited to two letters located in the middle part of the signs, where they will be less noticeable to consumers.

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). Therefore, there is a likelihood of confusion on the part of the public under analysis, namely at least a significant part of the Spanish-speaking public in the relevant territory.

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. This conclusion is also true even if considering that the degree of attention of the relevant consumers in relation to some of the services at issue may be higher than average and that some of the services are similar only to a low degree. The similarity between the marks outweighs the low similarity between these services.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 423 282 designating the European Union. It follows that the contested trade mark must be rejected for all the contested services.

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

Begoña VALIENTE URIARTE

Martin INGESSON

Lena FRANKENBERG GLANTZ

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