OPPOSITION Nо B 3 078 489

CarNext B.V., Gustav Mahlerlaan 360, 1082 ME Amsterdam, Netherlands (opponent), represented by Hgf Bv, Gedempt Hamerkanaal 147, 1021 KP Amsterdam, Netherlands (professional representative) 

 

a g a i n s t

 

All Car Leasing, Inc., 13900 Laurel Lakes Avenue, Suite 100, 20707 Laurel, United States of America (applicant), represented by CBH Rechtsanwälte Cornelius Bartenbach Haesemann & Partner, Tesdorpfstrasse 8, 20148 Hamburg, Germany (professional representative).

On 28/01/2021, the Opposition Division takes the following

 

 

DECISION:

1. Opposition No B 3 078 489 is partly upheld, namely for all the contested services in Classes 35 and 39, namely

Class 35 (in its entirety): Franchising services, namely, offering business management assistance in the establishment and/or operation of dealerships in the sale, lease and rental of vehicles, including automobiles; Retail store services and online retail store services featuring new and used automobiles and auto parts; dealerships in the field of automobiles.

Class 39 (in its entirety): Vehicle rental services; leasing of automobiles.

2. European Union trade mark application No 17 982 522 is rejected for all the above services. It may proceed for the remaining services in Classes 36 and 42.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services (in Classes 35, 36, 39 and 42) of European Union trade mark application No 17 982 522 (word mark: ‘NEXTCAR’). The opposition is based on, inter alia, international registration designating the European Union No 1 425 483 (figurative mark: ‘ ). After a limitation as regards the legal basis of the opposition - see below - the opponent only invoked Article 8(1)(b) EUTMR.

Preliminary remark

As far as the opposition was initailly based on Article 8(4) and 8(5) EUTMR, the opponent pointed out in its observations of 30/03/2020, page 2, that it wished ‘to solely rely on 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.

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 international registration designating the European Union No 1 425 483.

a) The services

The services in Classes 35, 37 and 39 on which the opposition is based are the following:

Class 35: Retail services in relation to vehicles; business administration services relating to the sale of vehicles, vehicle leasing and vehicle rental; business consultancy in the field of sale, leasing and rental of vehicles.

Class 37: Maintenance, servicing and repair of vehicles and parts thereof; washing, cleaning, polishing and lubrication services for vehicles; tyre retreading; tyre balancing; vulcanizing of tyres (repair); anti-rust treatment (preventive) for vehicles; repair information.

Class 39: Rental of vehicles; vehicle leasing services; providing information relating to the rental and leasing of vehicles.

The contested services in Classes 35, 36, 39 and 42 are the following:

Class 35: Franchising services, namely, offering business management assistance in the establishment and/or operation of dealerships in the sale, lease and rental of vehicles, including automobiles; Retail store services and online retail store services featuring new and used automobiles and auto parts; dealerships in the field of automobiles.

Class 36: Franchising services, namely providing financial information and advice regarding the establishment and/or operation of dealerships in the sale, lease and rental of vehicles, including automobiles.

Class 39: Vehicle rental services; leasing of automobiles.

Class 42: Franchising services, namely, planning and design of information technology systems for business franchises in the field of dealerships in the sale, lease and rental of vehicles, including automobiles.

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

The term ‘including’, used in the applicant’s list of 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).

However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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.

Contested services in Class 35

The contested retail store services and online retail store services featuring new and used automobiles and auto parts; dealerships in the field of automobiles are included in the broad category of, or overlap with, the opponent’s retail services in relation to vehicles. Therefore, they are identical.

The contested franchising services, namely, offering business management assistance in the establishment and/or operation of dealerships in the sale, lease and rental of vehicles, including automobiles have the same purpose, public and provider as the opponent´s business administration services relating to the sale of vehicles, vehicle leasing and vehicle rental. Therefore, they are similar.

Contested services in Class 39

Vehicle rental services; leasing of automobiles are identically contained in both lists of services (including synonyms).

Contested services in Classes 36 and 42

All the contested franchising services, namely providing financial information and advice regarding the establishment and/or operation of dealerships in the sale, lease and rental of vehicles, including automobiles in Class 36 and franchising services, namely, planning and design of information technology systems for business franchises in the field of dealerships in the sale, lease and rental of vehicles, including automobiles in Class 42 have different natures and purposes. Furthermore, these contested services are neither complementary to nor in competition with the opponent’s services. Their distribution channels, public, provider and methods of use are also different. The fact that the services refer to vehicles is not sufficient to judge them as similar, for the above cited reasons. Therefore, they are dissimilar.

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 services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature or terms and conditions of the services purchased.

c) The signs

	NEXTCAR
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.

Both signs are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the English-speaking part of the public.

The contested sign is a word mark, which is protected in all typefaces.

The earlier trade mark is a figurative mark. The figurative element consists of a string of thick interconnected orange lines with the word sequence ‘CarNext’ in white.

According to the practice of the Office, the combination of the comprehensible individual elements ‘Next’ and ‘Car’ merely creates a combination that is suggestive. It is not promoting a clearly and immediately positive aspect of the services. The sign ‘NEXTCAR’ plays on the meaning of ‘Next’ as an allusion to the ‘future’, in the sense that it can be used as an adjective to mean ‘immediately following’. However, the combination of ‘NEXT’ and ‘CAR’ does not convey this message in a clear and unambiguous way. For English consumers, additional elements are required when combining ‘NEXT’ and the name of a product in order for it to be immediately understood that these products are the most advanced. However, the syntactical structure of ‘Next’ and ‘Car’ per se does not lend itself to articulating this laudatory meaning. Therefore, the word combination is distinctive. This applies even more so for the differently ordered word combination in the earlier trade mark ‘CarNext’.

The figurative elements of the earlier trade mark are not basic and are, therefore, distinctive. Furthermore, they are not related to the goods and services in question.

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

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).

Visually, the signs differ in the above cited figurative elements of the earlier trade mark. Since the word elements coincide and only the order of the two elements ‘Next’ and ‘Car’ is different, the signs are visually similar to an average degree (see also comparable judgment of the General Court, ECLI:EU:T:2019:794 of 20/11/2019, /MEDIFLOR).

Aurally, the figurative elements will not be pronounced. Therefore, the degree of similarity is slightly higher, namely an above-average degree.

Conceptually, both signs have the same meaning, as mentioned above. Therefore, they are conceptually identical.

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 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.

e) Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested services are partly identical or similar and partly dissimilar.

According to Article 8(1)(b) EUTMR, similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are partly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected in regard to those goods.

Taking into account the average degree of visual similarity, the above average degree of aural similarity, the conceptual identity, the normal distinctiveness of the earlier trade mark and the identity or similarity of the services, there is, even for the public with a high degree of attention, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This applies even more so, when the degree of attention of the public is only average.

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.

In contrast to the opinion of the applicant, the differences between the signs are not sufficient to distinguish them clearly from each other. They will be viewed as coming from the same or economically linked undertakings. The argumentation of the applicant is based on the fact that the earlier trade mark has a very low degree of distinctiveness. As mentioned above in detail, this is not the case for the services in question.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

The opponent has also based its opposition on the following earlier trade marks:

 International registration designating the European Union and United Kingdom No
1 426 420 for the same earlier trade mark and for the same services;

 Benelux trade mark registrations No 1 025 949 and No 1 025 950 for the same earlier trade marks and for the same services.

Since these marks are identical to the one which has been compared and cover the same services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Claudia MARTINI

Peter QUAY

Gonzalo BILBAO TEJADA

 

 

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.