OPPOSITION No B 3 083 404

Volkswagen Aktiengesellschaft, Berliner Ring 2, 38440 Wolfsburg, Germany (opponent), represented by Dennemeyer & Associates, Landaubogen 1-3, 81373 München, Germany (professional representative)

a g a i n s t

Michael Weitzer, Leobendorferstr 69/3, 2105 Unterrohrbach, Austria (applicant).

On 11/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 083 404 is upheld for all the contested goods.

2. European Union trade mark application No 18 019 621 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 019 621 for the word mark ‘AMAFLEXROK’. The opposition is based on, inter alia, international trade mark registration No 1 136 510 designating the European Union for the word mark ‘AMAROK’. 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.

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 trade mark registration No 1 136 510 designating the European Union.

1. The goods

The goods on which the opposition is based are the following:

Class 12: Motorized land vehicles; motorbuses, trucks, caravans, trailers and semi-trailers for vehicles, trailer hitches for vehicles; tractors; motorcycles, mopeds, omnibuses.

The contested goods are the following:

Class 12: Vehicles and conveyances; vehicles; freight carrying vehicles.

The contested vehicles (listed twice) and conveyances include, as a broader category, the opponent’s motorized land vehicles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested freight carrying vehicles overlap with the opponent’s motorized land vehicles and are therefore considered 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 are directed at the public at large and at business customers with specific professional knowledge or expertise, such as in the freight forwarding sector.

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). This same finding applies to all the relevant goods.

3. The signs and the distinctiveness of the earlier mark

AMAROK	AMAFLEXROK
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Although the contested sign is one verbal element, part of the relevant public will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In the present case, a significant part of the relevant public will perceive the verbal component ‘FLEX’, in the middle of the contested sign, since it brings ‘flexible’ or ‘flexibility’ to mind and may allude to the characteristics of the relevant goods, such as the flexibility of some of the materials vehicles are made of. The distinctiveness of this verbal component is therefore reduced and has limited impact on the overall impression of the sign.

The remaining verbal components of the contested sign, namely ‘AMA’ and ‘ROK’, and the earlier mark ‘AMAROK’ are meaningless and invented words for the vast majority of the public in the European Union. Therefore, they have a normal degree of distinctiveness. The Opposition Division finds it appropriate to focus the further assessment on part of the public, namely the consumers in France, Germany, Italy and the United Kingdom, for which the verbal element ‘flex’ was considered of reduced distinctiveness.

Since the earlier mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory – and given the lack of a claim for enhanced distinctiveness on the side of the opponent – the distinctiveness of the earlier mark must be seen as normal.

Visually and aurally the signs coincide in their strings of letters (and sounds) ‘AMA’ and ‘ROK’, which constitute the entire earlier mark and the beginning and ending of the contested sign. They differ in the additional component ‘FLEX’, in the middle of the contested sign, with no counterpart in the earlier mark. This element, however, is of reduced distinctiveness, as seen above.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the element ‘FLEX’ in the contested sign will evoke a concept, the other sign has no meaning for the relevant public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The identical goods target both the public at large and the professional public. The degree of attention is high.

The signs are visually and aurally similar to an average degree and conceptually not similar. The distinctiveness of the earlier mark is normal.

The signs have identical beginnings and endings. The only difference between them is the additional element ‘FLEX’, in the middle of the contested sign, which has limited impact on consumers as seen above. This difference on its own is not sufficient to counteract the striking visual and aural similarities between the signs.

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). It is likely that in the present case consumers will recall the identical beginnings and endings of the signs and pay less attention to the central letters of the contested sign when they encounter them in the market.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically linked undertakings.

It is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public in France, Germany, Italy and the United Kingdom. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 136 510 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right No 1 136 510 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, he 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

Manuela RUSEVA

Sylvie ALBRECHT

Sofía SACRISTÁN MARTÍNEZ

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.