OPPOSITION No B 3 082 378

Jaguar Land Rover Limited, Abbey Road, Whitley, CV3 4LF Coventry, United Kingdom (opponent), represented by Reddie & Grose LLP, The White Chapel Building, 10 Whitechapel High Street, E1 8QS London, United Kingdom (professional representative)

a g a i n s t

XS Direct Insurance Brokers Limited, 1 Merrion Place, Dublin 2, Dublin, Ireland (applicant), represented by Mason Hayes & Curran, South Bank House, Barrow Street, Dublin 4, Dublin, Ireland (professional representative).

On 15/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 378 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 and services of European Union trade mark application No 18 003 421 for the word mark ‘XS DIRECT’. The opposition is based on international trade mark registration No 1 390 237 designating the European Union for the word mark ‘XS’ (earlier mark 1) and United Kingdom trade mark registration No 3 229 014 for the word mark ‘XS’ (earlier mark 2). 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 and services

In the notice of opposition, the opponent relied on the original list of its international trade mark registration No 1 390 237 designating the European Union for the word mark ‘XS’ (earlier mark 1). However, according to the Madrid Monitor, this earlier right was partially cancelled and partially limited by the IR holder. Therefore, the goods and services on which the opposition is based are the following:

Earlier mark 1

Class 12: Vehicles; motor vehicles; apparatus for locomotion by land, air and/or water; motor land vehicles; land vehicles; off-road vehicles; ATVs; driverless motor vehicles; autonomous motor vehicles; racing cars; reconditioned classic vehicles; vehicles sold in kit form; commercial vehicles; electric vehicles; hybrid vehicles; military vehicles; vehicles for use by emergency services, search and rescue services; powertrains for land vehicles; engines for land vehicles; motors for land vehicles; engines for motorcycles; motors for motorcycles; engines for bicycles; motors for bicycles; engines for racing cars; trailers; arm rests for vehicle seats; luggage bags specially adapted for fitting in the boot of vehicles; car interior organizer bags, nets and trays specially adapted for fitting in vehicles; head-rests for vehicle seats; vehicle head rest covers; wing mirror protective and vanity covers; car seat covers; covers for vehicle steering wheels; fitted covers for vehicles; wheels for vehicles; alloy wheels; wheel trims; wheel rims; spare wheels; hub caps for wheels; hub centre caps; wheel covers; wheel sprockets; spoilers for vehicles; covers for vehicles; seats for vehicles; safety seats for vehicles; safety belts for vehicles; safety harnesses for vehicles; safety signals [audible] for vehicles; anti-theft, security and safety devices and equipment for vehicles; radiator grilles for vehicles; trim panels for vehicle bodies; doors for vehicles; vehicle windows; vehicle windshields; window glass for vehicle windows and windshields; roof windows for vehicles; skylight windows for vehicles; vehicle bumpers; vehicle centre consoles sold as parts of vehicles and which incorporate electronic interfaces; bicycles; tricycles; parts, fittings and accessories for bicycles; hover boards; scooters; quadricycles; motorised unicycles; go-karts; strollers and prams, and their parts and accessories; baby, infant and child seats for vehicles; sun blinds, roof racks, luggage carriers and nets, cycle carriers, sail board carriers, ski carriers, and snow chains, all for vehicles; drones; unmanned aerial vehicles; personal air vehicles; hovercraft; underwater vehicles; jet vehicles for water sports; remote control vehicles, not toys; parts and fittings for all of the aforesaid goods; excluding pneumatic tyres.

Class 37: Maintenance, repair, servicing, reconditioning, restoration, inspection, care, cleaning, painting and polishing of passenger vehicles, drones, unmanned aerial vehicles, automotive manufacturing machinery, internal combustion engines or of parts and fittings for all these goods; applying external finishes or coatings to vehicles; assembly of accessories for vehicles (installation services); vehicle breakdown assistance [repair]; providing emergency roadside assistance service; tuning of engines and motor vehicles; providing maintenance and vehicle repair assistance and information to drivers regarding their vehicles; maintenance, upgrading and diagnostic repair services for in-car electronics systems or in-car entertainment systems; charging station services for electric vehicles; vehicle battery charging; custom tuning of vehicles; automotive upgrade services; information, consultancy and advice relating to any of the aforesaid services and for the supply of parts for motor land vehicles.

Earlier mark 2

Class 12: Vehicles; motor vehicles; apparatus for locomotion by land, air and/or water; motor land vehicles; land vehicles; off-road vehicles; ATVs; driverless motor vehicles; autonomous motor vehicles; racing cars; reconditioned classic vehicles; vehicles sold in kit form; commercial vehicles; electric vehicles; hybrid vehicles; military vehicles; vehicles for use by emergency services, search and rescue services; powertrains for land vehicles; engines for land vehicles; motors for land vehicles; engines for motorcycles; motors for motorcycles; engines for bicycles; motors for bicycles; engines for racing cars; trailers; arm rests for vehicle seats; luggage bags specially adapted for fitting in the boot of vehicles; car interior organizer bags, nets and trays specially adapted for fitting in vehicles; head-rests for vehicle seats; vehicle head rest covers; wing mirror protective and vanity covers; car seat covers; covers for vehicle steering wheels; fitted covers for vehicles; wheels for vehicles; alloy wheels; wheel trims; wheel rims; spare wheels; hub caps for wheels; hub centre caps; wheel covers; wheel sprockets; spoilers for vehicles; covers for vehicles; seats for vehicles; safety seats for vehicles; safety belts for vehicles; safety harnesses for vehicles; safety signals [audible] for vehicles; anti-theft, security and safety devices and equipment for vehicles; radiator grilles for vehicles; trim panels for vehicle bodies; doors for vehicles; vehicle windows; vehicle windshields; window glass for vehicle windows and windshields; roof windows for vehicles; skylight windows for vehicles; vehicle bumpers; vehicle centre consoles sold as parts of vehicles and which incorporate electronic interfaces; bicycles; tricycles; parts, fittings and accessories for bicycles; hover boards; scooters; quadricycles; motorised unicycles; go-karts; strollers and prams, and their parts and accessories; baby, infant and child seats for vehicles; sun blinds, roof racks, luggage carriers and nets, cycle carriers, sail board carriers, ski carriers, and snow chains, all for vehicles; drones; unmanned aerial vehicles; personal air vehicles; hovercraft; underwater vehicles; jet vehicles for water sports; remote control vehicles, not toys; parts and fittings for all of the aforesaid goods; excluding pneumatic tyres.

Class 37: Maintenance, repair, servicing, reconditioning, restoration, inspection, care, cleaning, painting and polishing of passenger vehicles, drones, unmanned aerial vehicles, automotive manufacturing machinery, internal combustion engines or of parts and fittings for all these goods; applying external finishes or coatings to vehicles; diagnostic or inspection services, all for motor cars or for parts and fittings therefor, or for internal combustion engines; assembly of accessories for vehicles (installation services); vehicle breakdown assistance [repair]; providing emergency roadside assistance service; tuning of engines and motor vehicles; providing maintenance and vehicle repair assistance and information to drivers regarding their vehicles; maintenance, upgrading and diagnostic repair services for in-car electronics systems or in-car entertainment systems; charging station services for electric vehicles; vehicle battery charging; custom tuning of vehicles; automotive upgrade services; information, consultancy and advice relating to any of the aforesaid services and for the supply of parts for motor land vehicles.

The contested goods and services are the following:

Class 9: Computer programmes; computer hardware and software; sound and video recording apparatus; vehicle monitoring apparatus and equipment; telematics apparatus and instruments; vehicle tracking systems; parts and fittings for the aforesaid goods.

Class 16: Printed matter namely publications; pamphlets; brochures; booklets; stationery; magazines; newspapers; periodicals; journals.

Class 35: Business consultancy services; advertising, promotional and marketing services; business management; business administration; business advisory services.

Class 36: Financial services; insurances services; insurance brokerage; insurance underwriting; re-insurance services; financial evaluations and appraisals; financial analysis; management of portfolios; monetary affairs; real estate affairs; arranging and providing mortgages; information and consultancy services regarding all of the aforesaid services.

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

Contested goods in Class 9

The contested goods in this class are not similar to the goods and services of earlier marks 1 and 2 in Class 12 (mainly vehicles, vehicles parts and fittings) and Class 37 (mainly maintenance, repair, servicing, upgrading, diagnosing, reconditioning, restoration, inspection, care, cleaning, painting, polishing, inspecting of vehicles). They clearly differ in nature, serve different needs, have different purposes and methods of use, and do not share the same distribution channels. They are neither complementary nor in competition. They do not target the same consumers. Moreover, they are not likely to come from the same kind of undertakings.

The opponent argues that in the reality of the automotive sector, vehicles incorporate a whole host of computer programs, hardware, software and other technology, which form an integral part of the vehicle. These various technological capabilities include infotainment systems, engine diagnostics, assisted driving, automated functions, navigation, and communications between the car and the user’s phone or the emergency services. In addition, speed limiters can be added and driver tracking and other software can track and communicate the whereabouts of the vehicle, either when parked or if the vehicle is stolen. The opponent also adduced evidence purportedly demonstrating that automotive manufacturers include software in a vehicle, and that this can often strongly influence the attractiveness of a vehicle and significantly contribute to its selling power. As a result, vehicle manufacturers are significantly involved in the manufacture of goods in Class 9 (as covered by the contested sign). This proves complementarity between the goods and services at issue, since some of the contested goods are integral parts of all vehicles.

The automobile industry is a complex industry involving various kinds of companies. These include car manufacturing companies, as well as any suppliers that provide the car manufacturer with raw materials (metal, aluminium, plastics, paints, etc.), parts, modules or even complete systems. Several areas of production can be distinguished: drive engineering, chassis, electronics, interior and exterior. The complexity of the industry and the fact that the final product incorporates some component parts and accessories complicate the examination of similarity between the end product (a car) and the various parts used for its production. Furthermore, when purchasing a car, the general public knows that a car incorporates many items from various sources and that the car manufacturer might assemble components that have been manufactured by others. In particular, it should be kept in mind that there are goods that will only be purchased by the automobile industry without any possibility of them ever reaching or being purchased by the general public (end consumer). Even though it is indisputable that some of the contested goods could indeed be integrated in internal computer systems or used together with vehicles (e.g. vehicle monitoring apparatus and equipment and vehicle tracking systems), these goods are not commonly produced by the car manufacturer itself and they cannot be purchased by the general public for repair or maintenance purposes (unlike, for example, batteries and/or wheel rims). On the contrary, car manufacturers form a relevant public interested in purchasing these goods from its suppliers – which are specialised IT service providers – and subsequently incorporating them into vehicles, whilst the general public, is a usual consumer of the opponent’s goods. By definition, complementary goods or services must be capable of being used together, so that goods and services targeting different publics cannot be complementary (15/06/2017, T‑457/15, climaVera (fig.) / CLIMAVER DECO, EU:T:2017:391, § 36; 26/04/2016, T‑21/15, DINO (fig.) / DEVICE OF A DINOSAUR (fig.), EU:T:2016:241, § 22; 22/01/2009, T‑316/07, easyHotel, EU:T:2009:14, § 57-58), even if they are considered mutually indispensable (25/01/2017, T‑325/15, Choco Love (fig.) / CHOCOLATE, EU:T:2017:29, § 40, 43, 46). Furthermore, complementarity applies only to the use of goods, not to their production process. Goods cannot be regarded as complementary on the ground that one is used to manufacture the other (09/04/2014, T‑288/12, Zytel, EU:T:2014:196; § 39; 25/09/2018, T‑435/17, HIPANEMA (fig.) / Ipanema (fig.) et al., EU:T:2018:596; § 71). Even when one product is used to manufacture another, this does not mean that the relevant public will assume they are offered by the same undertaking (06/04/2017, T‑39/16, NANA FINK (fig.) / NANA, EU:T:2017:263, § 89).

The opponent further argues that the contested goods in this class are similar to the services in Class 37 covered by the earlier marks. It states that when a consumer takes a vehicle in for maintenance, repair or servicing etc., the vehicle will often be plugged into a machine which runs tests on the vehicle, and which incorporates software for monitoring or diagnosing any problems with the vehicle. Insofar as these contested goods relate to vehicles, there is a similarity between them. However, the Opposition Division does not concur with the opponent’s argument. There are numerous differences between the goods and services at issue. By their nature goods are, in general, different from services. This is because goods are articles of trade, wares or merchandise. Their sale usually entails the transfer of title for something physical. Services, on the other hand, consist of the provision of intangible activities. In addition, the opponent’s services in this class are mainly provided by specialised companies in the field of vehicle maintenance and repair, whose business is not the manufacture and sale of the goods covered by contested sign in Class 9. Although it is indisputable that some of the contested goods can be used in the provision of the opponent’s services in Class 37, this fact alone is not sufficient to find them similar where the aforementioned ‘Canon Criteria’ have not been met, which is the case here.

The opponent has not provided any convincing arguments or evidence explaining why it considers these contested goods to be similar. Therefore, they are dissimilar to all the opponent’s goods and services.

Contested goods in Class 16

The contested printed matter namely publications; pamphlets; brochures; booklets; stationery; magazines; newspapers; periodicals; journals have nothing in common with the goods and services in Classes 12 and 37 of earlier marks 1 and 2. They differ in nature and purpose, relevant public, distribution channels, usual providers/producers and method of use. They are neither necessarily in competition nor complementary. Therefore, they are dissimilar.

The opponent argued that these contested goods are similar to the opponent’s various vehicles, parts and fittings in Class 12 insofar as they could take the form of a user’s guide or manual for a vehicle; instructions for the assembly or installation of a product or spare part; a magazine or brochure on the history of an automotive brand and models in past or present production; or information relating to the maintenance of a vehicle. It further argued that vehicles are a very popular subject of publications, that many cater to motor enthusiasts, and that these publications can focus on one specific type of vehicle, one vehicle manufacturer or even on a specific model of vehicle.

However, the Opposition Division does not find the opponent’s arguments plausible. The opponent’s goods, being various vehicles, and parts and fittings thereof, are not similar to any of the applicant’s goods or services. They are complex mechanical machines and specialised parts related thereto, produced in bespoke factories. As such, they do not share any of the ‘Canon Criteria’ with the applicant’s goods in Class 16. In particular, the production of vehicles is a substantially different activity from printing publications, brochures, booklets. Even though producers of vehicles often provide publications, advertising material, magazines, or catalogues of spare parts related to their goods, these two activities are not usually offered by the same undertakings. On the contrary, such companies usually have these publications delivered by third parties through contractual agreements with them. However, it is not part of their own field of activities.

The opponent has not provided any convincing arguments or evidence explaining why it considers these contested goods to be similar. Therefore, they are dissimilar to all the opponent’s goods and services.

Contested services in Class 35

All the contested services listed in this class, being mainly various advertising, business management and business administration services are aimed at supporting or helping other businesses to do or improve business. Therefore, in principle, they are directed at the professional public.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field, such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. Business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities towards common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since these enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia. employment agencies, auditors and outsourcing companies.

These contested services have nothing in common with the goods and services in Classes 12 and 37 of earlier marks 1 and 2. They clearly differ in nature, serve different needs, have different purposes and methods of use, and do not share the same distribution channels. They are neither complementary nor in competition. They do not target the same consumers. Moreover, they are not likely to come from the same kind of undertakings. Therefore, they are considered dissimilar.

The opponent argues in its observations that automotive manufacturers promote, advertise, and manage their own products, and build up considerable expertise in this area. For example, manufacturers of vehicles can provide advertising, promotional and marketing services to authorised mechanics or independent retailers selling the manufacturers vehicles. The Opposition Division does not concur with the opponent’s arguments. The Opposition Division notes that the contested services all consist of providing others with services related to the running of a company and assistance in promotion as well as sale of their goods and services. These services are provided by advertising companies to others, not by the manufacturer for its own products as is the case for the opponent’s goods and services. It cannot be supposed, without some solid evidence to substantiate such a claim, that the manufacturer of a product will render such specialised advertising services to promote the goods of other undertakings, because this is simply not standard market practice. In addition, advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised. The relevant public of the aforementioned services is entirely different from that targeted by the opponent’s goods and services. Not only is their nature and purpose very distinct, but the skills and expertise required to provide those services is also entirely different. There is no close connection between those services and the opponent’s goods. The consumers of the goods and services in conflict do not overlap, so that it is unlikely that the same undertaking would be perceived as being responsible for the provision of the services and the sale of the goods.

The opponent has not provided any convincing arguments or evidence explaining why it considers these contested services to be similar. Therefore, they are dissimilar to all the opponent’s goods and services.

Contested services in Class 36

The contested services in this class are mostly various financial, insurance, monetary and real estate services as well as information and consultancy services relating thereto. These contested services have nothing in common with the goods and services in Classes 12 and 37 of earlier marks 1 and 2. They clearly differ in nature, serve different needs, have different purposes and methods of use, and do not share the same distribution channels. They are neither complementary nor in competition. They do not target the same consumers. Moreover, they are not likely to come from the same kind of undertakings. Therefore, they are considered dissimilar.

In its observations the opponent claims that it is common on the market for the same undertakings which manufacture goods such as various vehicles, or provide services in Class 37 (as covered by the earlier marks), to also provide the associated financial services. The opponent provided extracts from its website and those of its competitors in the field of vehicle manufacture, allegedly demonstrating that these producers render financial services. In particular, it states that the aforementioned producers provide various options for financing new or used vehicles (e.g. personal contract purchase; hire purchase; advance payment plans), and it is common for them to offer financial valuation services in respect of vehicles, including second-hand vehicles. Furthermore, the opponent argues that financial services will often be requested at the same time as the sale of a vehicle takes place, and these services are intended to enable the customer to buy a vehicle which they might otherwise be unable to pay for. Moreover, it suggests that the goods and services at issue are complementary, target the same relevant public and often share the same distribution channels, which demonstrates that they are similar to each other. In particular, the opponent claims that its inspection of passenger vehicles in Class 37 are similar to the contested financial evaluations and appraisals and financial analysis, given that in order to evaluate and value a vehicle, it needs to be inspected.

However, the Opposition Division does not concur. It should be noted that financial services concern the management of money, capital and/or credit and investments, and are provided by the finance industry. The finance industry encompasses a broad range of organisations that deal with the management, investment, transfer, and lending of money. Among these organisations are, for example, banks, credit card companies, consumer finance companies, stock brokerages and investment funds. In contrast, the opponent’s list of goods and services are mainly various vehicles and vehicle parts in Class 12 and diverse services related to the maintenance, repair, servicing, upgrading, diagnosing, and inspecting of vehicles in Class 37. Even though it is indisputable that consumers buying vehicles often need financial support – for example by means of loans – this does not mean that the vehicle manufacturers in their field of activities are rendering financial services on their own. Instead, they will cooperate with specialised financial service providers to enable interested consumers to receive the necessary financial support for their purchase.

The opponent has not provided any convincing arguments or evidence explaining why it considers these contested services to be similar. Therefore, they are dissimilar to all the opponent’s goods and services.

b) Conclusion

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

Likewise, even assuming that the earlier marks enjoy an enhanced distinctiveness due to extensive use, as claimed by the opponent in its submissions, the outcome of no likelihood of confusion remains the same. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above. Therefore, it is not necessary to examine the evidence of extensive use.

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.

The Opposition Division

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Jakub MROZOWSKI

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.