OPPOSITION Nо B 3 088 827

 

Norauto International, société par actions simplifiée, 511-589 Rue des Seringats, 59262 Sainghin en Melantois, France (opponent), represented by Plasseraud IP, 31 rue des Poissonceaux, 59044 Lille Cedex, France (professional representative) 

 

a g a i n s t

 

Tom E-Com B.V., Rootven 19 A, 5531 MB Bladel, Netherlands (applicant), represented by Onel Trademarks, Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative).

On 04/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 088 827 is partially upheld, namely for the following contested goods and services:

 

Class 9: Computers for bicycles, including cycle computers and speedometers; electronic publications.   Class 35: Advertising, publicity, promotion and business organisation consultancy; business management of shops in the context of franchising; drafting and concluding franchise agreements relating to shops (franchising); dissemination of advertising and promotional material, including via the internet, for consumer goods, namely spectacles, sun glasses, cycles, bicycle components, automotive goods, clothing, books, newsletters, magazines, pamphlets, and brochures, greeting cards, playthings, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents, and sport articles; promotion of consumer goods, namely spectacles, sun glasses, cycles, bicycle components, automotive goods, clothing, books, newsletters, magazines, pamphlets, and brochures, greeting cards, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents, and sport articles; business intermediary services in the purchase, sale of consumer goods, namely spectacles, sun glasses, cycles, bicycle components, automotive goods, clothing, books, newsletters, magazines, pamphlets, and brochures, greeting cards, playthings, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents, and sport articles; import and export of consumer goods, namely spectacles, sun glasses, cycles, bicycle components, automotive goods, clothing, books, newsletters, magazines, pamphlets, and brochures, greeting cards, playthings, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents, and sport articles; arranging of trade fairs and exhibitions for commercial and/or advertising purposes; provision of commercial information; public relations services; advertising campaigns relating to trade fairs, exhibitions and congresses; merchandising; business management; business administration; office functions; the aforesaid services whether or not provided via the internet; none of the aforementioned services relating to scooters, except two wheeled push scooters or three wheeled push scooters having two smaller front wheels and one larger back wheel; none of the aforementioned services relating to mobility scooters or any mobility scooters or any goods being for the physically handicapped or those of reduced mobility.

2.

European Union trade mark application No 18 021 302 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

 

3.	Each party bears its own costs.

 

REASONS

 

On 12/07/2019, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 021 302 ‘AMIGO’ (word mark). The opposition is based on French trade mark registration No 4 440 442, (figurative mark). 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

 

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

Class 35: Services for the electronic diffusion of publicity and commercial information, namely through global communication networks (Internet) or private access (Intranet); economic forecasting services; sales promotion services for third parties; appointment scheduling administrative services, appointment setting administrative services through Internet regarding vehicle maintenance and repair services; intermediary services; loyalty, incentive and bonus program services; price comparison services, online estimating services; loyalty program services; administrative assistance services to third parties in obtaining vehicle registration or registration card; drafting of vehicle maintenance and repair contracts.

Class 36: Financial services related to the possession of loyalty cards; loyalty scheme; loyalty card payment services, and loyalty promotional coupons payment services; issuing of payment gift cards, credit notes and vouchers; financial services related to the possession of loyalty promotional coupons.

Class 38: Information transmission services by telephone, telematics; electronic mail and mailbox services through Internet network; computer-assisted message and image transmission; Internet communication services, computer terminal communication, transmission of information, messages, images, data over networks and computer telecommunication networks; electronic mail or telematics, communication and transmission of messages, information and data, online or offline, from data processing systems, computer networks including the global telecommunications network known as the "Internet"; secure data transmission services, namely with access codes. Service for connecting people through the Internet (virtual social network), namely the provision of discussion forums on the Internet, all the above-mentioned services being exclusively related to information concerning the location, condition and/or maintenance of vehicles.

Class 41: Training; personalized support [coaching] [education and training] in the field of mobility; driver training, driving coach; all the aforementioned services not being related to gambling, chance, luck or knowledge.

Class 45: Provision of social services, namely the provision of community outreach programs; provision of online social networking services for the purpose of commenting, comparing, collaborating, assisting, evaluating, advising, discussing, researching, notifying, reporting, identifying, sharing information, indexing, locating information, entertaining, enjoying, or general interest; legal services; legal advices; advice and information about legislation; security services for the protection of property and individuals.

Following a limitation filed by the applicant on 18/12/2019, the contested goods and services are the following:

Class 9: Cycle helmets and glasses; sunglasses; computers for bicycles, including cycle computers and speedometers; tablet computer and telephone holders for vehicles; parking sensors; rearview cameras for vehicles, vehicle breakdown warning triangles, optical apparatus and instruments; spectacles [optics]; spectacle frames; spectacle lenses; spectacle cases; contact lenses; binoculars; containers for contact lenses; boxes and cases for contact lenses; diving goggles; measuring instruments, namely barometers, hygrometers and thermometers; electronic publications.

Class 12: Bicycles and accessories for bicycles, including bicycle bells and pumps for bicycle tyres; parts of metal for bicycles, not included in other classes; scooters, namely two wheeled push scooters or three wheeled push scooters having two smaller front wheels and one larger back wheel; safety belts for vehicle seats, child's seats, suspension shock absorbers, spoilers, upholstery covers, protective covers, signal horns, anti-skid chains, wheel trims, decorative rings, sporty steering wheels, luggage racks, wiper blades, head restraints, mirrors, protective covers, car seats, safety buckles, luggage nets, numberplate holders, hub caps, wheel trims, trim for vehicles, car door protectors and bumper guards; all of the aforementioned goods for cars, two-wheeled bicycles and scooters, namely two wheeled push scooters or three wheeled push scooters having two smaller front wheels and one larger back wheel, or parts therefor; none of the aforementioned goods being mobility scooters or scooters for the physically handicapped or those of reduced mobility.

Class 25: Clothing, footwear, headgear.

Class 28: Games and playthings, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals, play tents; gymnastic and sporting articles included in this class, namely sport equipment and sport articles.

Class 35: Advertising, publicity, promotion and business organisation consultancy; business management of shops in the context of franchising; drafting and concluding franchise agreements relating to shops (franchising); dissemination of advertising and promotional material, including via the internet, for consumer goods, namely spectacles, sun glasses, cycles, bicycle components, automotive goods, clothing, books, newsletters, magazines, pamphlets, and brochures, greeting cards, playthings, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents, and sport articles; promotion of consumer goods, namely spectacles, sun glasses, cycles, bicycle components, automotive goods, clothing, books, newsletters, magazines, pamphlets, and brochures, greeting cards, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents, and sport articles; business intermediary services in the purchase, sale of consumer goods, namely spectacles, sun glasses, cycles, bicycle components, automotive goods, clothing, books, newsletters, magazines, pamphlets, and brochures, greeting cards, playthings, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents, and sport articles; import and export of consumer goods, namely spectacles, sun glasses, cycles, bicycle components, automotive goods, clothing, books, newsletters, magazines, pamphlets, and brochures, greeting cards, playthings, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents, and sport articles; wholesaling and retailing of consumer goods in relation to spectacles, sunglasses, bicycles, parts for bicycles, automotive goods, clothing, books, toys, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents, and sport articles; the bringing together, for the benefit of others, of spectacles, sunglasses, bicycles, parts for bicycles, automotive goods, clothing, books, toys, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents and sport articles, enabling customers to conveniently compare and purchase those goods and services; provision of an on-line marketplace for buyers and sellers of goods and services; arranging of trade fairs and exhibitions for commercial and/or advertising purposes; provision of commercial information; public relations services; advertising campaigns relating to trade fairs, exhibitions and congresses; merchandising; business management; provision of an on line marketplace for buyers and sellers of goods and services; business administration; office functions; the aforesaid services whether or not provided via the internet; none of the aforementioned services relating to scooters, except two wheeled push scooters or three wheeled push scooters having two smaller front wheels and one larger back wheel; none of the aforementioned services relating to mobility scooters or any mobility scooters or any goods being for the physically handicapped or those of reduced mobility.

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 ‘including’, used in both lists of goods and/or services, indicates that the specific goods and/or 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 both lists of goods and/or services to show the relationship of individual goods and/or services to a broader category, is exclusive and restricts the scope of protection only to the goods and/or 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 goods in Class 9

The contested computers for bicycles, including cycle computers and speedometers are similar to the opponent's internet communication services in Class 38. It is true that they have a different nature. However, they coincide in distribution channels, relevant public and purpose. Furthermore, they are complementary.

The contested electronic publications and the opponent's training in Class 41 have different natures. However, they usually coincide in producer/provider, relevant public and distribution channels. Furthermore, they are complementary. In view of all this, they are considered to be similar.

The contested cycle helmets and glasses; sunglasses; tablet computer and telephone holders for vehicles; parking sensors; rearview cameras for vehicles, vehicle breakdown warning triangles, optical apparatus and instruments; spectacles [optics]; spectacle frames; spectacle lenses; spectacle cases; contact lenses; binoculars; containers for contact lenses; boxes and cases for contact lenses; diving goggles; measuring instruments, namely barometers, hygrometers and thermometers are dissimilar to all services covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods and services are neither complementary nor in competition and they target different end users.

Contested goods in Class 12

The contested bicycles and accessories for bicycles, including bicycle bells and pumps for bicycle tyres; parts of metal for bicycles, not included in other classes; scooters, namely two wheeled push scooters or three wheeled push scooters having two smaller front wheels and one larger back wheel; safety belts for vehicle seats, child's seats, suspension shock absorbers, spoilers, upholstery covers, protective covers, signal horns, anti-skid chains, wheel trims, decorative rings, sporty steering wheels, luggage racks, wiper blades, head restraints, mirrors, protective covers, car seats, safety buckles, luggage nets, numberplate holders, hub caps, wheel trims, trim for vehicles, car door protectors and bumper guards; all of the aforementioned goods for cars, two-wheeled bicycles and scooters, namely two wheeled push scooters or three wheeled push scooters having two smaller front wheels and one larger back wheel, or parts therefor; none of the aforementioned goods being mobility scooters or scooters for the physically handicapped or those of reduced mobility are dissimilar to all services covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods and services are neither complementary nor in competition and they target different end users.

Contested goods in Class 25

The contested clothing, footwear, headgear are dissimilar to all services covered by the opponent's trade mark. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods and services are neither complementary nor in competition and they target different end users.

Contested goods in Class 28

The contested games and playthings, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals, play tents; gymnastic and sporting articles included in this class, namely sport equipment and sport articles are dissimilar to all services covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods and services are neither complementary nor in competition and they target different end users.

Contested services in Class 35

The contested advertising, publicity, promotion and business organisation consultancy; business management of shops in the context of franchising; drafting and concluding franchise agreements relating to shops (franchising); dissemination of advertising and promotional material, including via the internet, for consumer goods, namely spectacles, sun glasses, cycles, bicycle components, automotive goods, clothing, books, newsletters, magazines, pamphlets, and brochures, greeting cards, playthings, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents, and sport articles; promotion of consumer goods, namely spectacles, sun glasses, cycles, bicycle components, automotive goods, clothing, books, newsletters, magazines, pamphlets, and brochures, greeting cards, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents, and sport articles; business intermediary services in the purchase, sale of consumer goods, namely spectacles, sun glasses, cycles, bicycle components, automotive goods, clothing, books, newsletters, magazines, pamphlets, and brochures, greeting cards, playthings, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents, and sport articles; import and export of consumer goods, namely spectacles, sun glasses, cycles, bicycle components, automotive goods, clothing, books, newsletters, magazines, pamphlets, and brochures, greeting cards, playthings, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents, and sport articles; arranging of trade fairs and exhibitions for commercial and/or advertising purposes; provision of commercial information; public relations services; advertising campaigns relating to trade fairs, exhibitions and congresses; merchandising; business management; business administration; office functions; the aforesaid services whether or not provided via the internet; none of the aforementioned services relating to scooters, except two wheeled push scooters or three wheeled push scooters having two smaller front wheels and one larger back wheel; none of the aforementioned services relating to mobility scooters or any mobility scooters or any goods being for the physically handicapped or those of reduced mobility are identical or at least similar to a low degree to the opponent’s services for the electronic diffusion of publicity and commercial information, namely through global communication networks (Internet) or private access (Intranet); economic forecasting services; sales promotion services for third parties; appointment scheduling administrative services, appointment setting administrative services through Internet regarding vehicle maintenance and repair services; intermediary services; loyalty, incentive and bonus program services; price comparison services, online estimating services; loyalty program services; administrative assistance services to third parties in obtaining vehicle registration or registration card; drafting of vehicle maintenance and repair contracts in Class 35. Some of the contested services are identical to the opponent’s services because the opponent’s services include or overlap with, the contested services (e.g. the opponent’s economic forecasting services and the contested business management; none of the aforementioned services relating to scooters, except two wheeled push scooters or three wheeled push scooters having two smaller front wheels and one larger back wheel; none of the aforementioned services relating to mobility scooters or any mobility scooters or any goods being for the physically handicapped or those of reduced mobility overlap). The remaining contested services are at least similar to a low degree to the opponent’s aforementioned services, because they at least coincide in provider, relevant public and distribution channels.

However, the contested wholesaling and retailing of consumer goods in relation to spectacles, sunglasses, bicycles, parts for bicycles, automotive goods, clothing, books, toys, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents, and sport articles; the bringing together, for the benefit of others, of spectacles, sunglasses, bicycles, parts for bicycles, automotive goods, clothing, books, toys, namely toys for babies and toddlers, children’s kitchens, model railways, steppers, trampolines, toy racing sets (including garages), dolls, swimming pools [play articles], swings, skates and skateboards, costume masks, vehicles (toys), marble courts, guns and shooting toys, sandboxes, battery vehicles (toys), kites, playhouses, musical instruments (toys), balls, shuffleboard, air mattresses, slides, football goals and play tents and sport articles, enabling customers to conveniently compare and purchase those goods and services; provision of an on-line marketplace for buyers and sellers of goods and services [repeated twice]; the aforesaid services whether or not provided via the internet; none of the aforementioned services relating to scooters, except two wheeled push scooters or three wheeled push scooters having two smaller front wheels and one larger back wheel; none of the aforementioned services relating to mobility scooters or any mobility scooters or any goods being for the physically handicapped or those of reduced mobility share no points of contact with the opponent’s services in Classes 35, 36, 38, 41 and 45 such as could lead to a finding of similarity given that they have different natures and purposes, being neither complementary nor in competition, and having completely different and distinct producers/providers, end users, and distribution channels. 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 goods and services found to be identical or at least similar to a low degree are directed at the public at large and also at business customers with specific professional knowledge or expertise.

 

The degree of attention is considered to be average.

c) The signs

	AMIGO
Earlier trade mark	Contested sign

 

The relevant territory is France.

 

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 consisting of the letters ‘Ami’ depicted using purple letters followed by the two letters ‘go’, placed on the same line but depicted using yellow letters which are encompassed within a purple speech bubble. Below the letters ‘Ami’, the verbal element ‘Norauto’ is positioned within a purple horizontal rectangle. The letters of this element are reproduced in white colour with the exception of the last letter ‘o’ which is yellow and they are significantly smaller than the ones that form ‘Ami’ and ‘go’.

The contested mark is a word mark, ‘AMIGO’.

The applicant claims that the verbal elements ‘Ami’ and ‘go’ of the earlier mark will be perceived as ‘friend and sometimes as go, so a friend on the go’, being ‘Ami’ the French word for friend and ‘go’ a basic English word. According to the applicant, the relevant public will not understand Spanish and will not consequently understand the word ‘amigo’ of the contested application. The Opposition Division deems that what the applicant claims is one of the possible scenarios, which also include the fact that ‘Norauto’ of the earlier mark will be seen as meaningless. Since this is the best perspective for the applicant, the Opposition Division will continue on this conceptual assumptions.

The applicant also claims that the element ‘Ami’ is ‘also rather descriptive for services in relation to assistance’ and that ‘Norauto’ is the dominant element. The Opposition Division does not share this point of view. On the contrary, it considers that all of the verbal elements of the signs are normally distinctive, since they are meaningless or they have a meaning which does not possess any connection with the goods and/or services and that the dominant elements of the earlier mark are ‘Ami’, ‘go’ and the speech bubble as they are the most eye-catching and overshadow the element ‘Norauto’. It is also true the fact that the figurative elements of the earlier mark are non-distinctive, since they serve merely a decorative function.

 As regards the earlier mark, account must be taken of the fact that 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 coincide in the letters ‘AMIGO’ constituting their distinctive verbal elements, although in the case of the earlier mark reproduced in a specific manner and separated in two verbal elements.

They differ in the additional figurative elements and in the distinctive but secondary element ‘Norauto’ of the earlier mark.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘AMIGO’, present identically in both signs. The pronunciation differs in the sound of the letters of the secondary element ‘Norauto’ of the earlier mark, which has no counterpart in the contested mark.

  

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

Conceptually, although the public in the relevant territory will perceive the meanings of the earlier mark as explained above, the other sign has no meaning in that territory. 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.

 

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

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 11 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods and services covered by the trade marks in dispute have been found partly identical, partly at least similar to a low degree and partly dissimilar. The signs are visually similar to an average degree and aurally similar to an above average degree. In fact, all the letters that form the contested sign, namely ‘AMIGO’ are placed in the same order in the earlier mark. The additional elements of the earlier mark are likely to play a secondary role, by virtue of their nature (the figurative element of the speech bubble and the purple rectangle) or size (the word ‘NORAUTO’). The similarities identified between the signs are strong enough to counterbalance the fact that from a conceptual perceptive at least a part of the French-speaking consumers might consider the signs as not conceptually similar.

The visual and aural similarities are all the more increased by the circumstance that the signs share the only word of the contested sign, which corresponds to the co-dominant elements of the earlier mark, ‘Ami’ and ‘go’.

Account is taken of the fact that 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).

In view of the visual and aural similarity of the signs, the average degree of distinctiveness of the earlier trade mark, the average degree of attention of the relevant public and the identity and at least low similarity of the goods and services, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partly well founded on the basis of the French trade mark registration No 4 440 442.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or at least similar to a low degree to the services of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

 

 

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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Victoria DAFAUCE MENÉNDEZ

Andrea VALISA

Martin MITURA

 

 

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.