OPPOSITION No B 3 089 836

Nors, S.A., Rua Manuel Pinto de Azevedo, nº 711, 1º, 4100-189 Porto, Portugal (opponent), represented by Gastão Da Cunha Ferreira, LDA., Rua dos Bacalhoeiros, nº. 4, 1100-070 Lisboa, Portugal (professional representative)

a g a i n s t

Motorasin Otomotiv Bilgisayar Sanayi Ve Ticaret Anonim Sirketi, Atatürk Mah., Ikitelli Cad. Nº: 44, Küçükçekmece, Istanbul, Turkey (applicant), represented by Esquivel & Martin Santos European Patent and Trade Mark Attorneys, Calle de Velázquez, 3 - piso 3, 28001 Madrid, Spain (professional representative).

On 25/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 089 836 is partially upheld, namely for the following contested goods:

Class 12: Motor land vehicles, motorcycles, mopeds; engines and motors for land vehicles; clutches, transmissions, transmission belts and transmission chains, gearing, gearboxes, brakes, brake discs and brake linings for land vehicles; vehicle chassis, automobile bonnets, vehicle suspension springs, shock absorbers for automobiles, steering wheels for vehicles, rims for vehicle wheels; bicycles and their bodies; handlebars and mudguards for bicycles; vehicle bodies; tipping bodies for trucks; trailers for tractors; frigorific bodies for land vehicles; trailer hitches for vehicles; vehicle seats; head-rests for vehicle seats; safety seats for children, for vehicles; seat covers for vehicles; vehicle covers (shaped); sun-blinds adapted for vehicles; direction signals and arms for direction signals for vehicles; windscreen wipers and wiper arms for vehicles; inner and outer tires for vehicle wheels; tubeless tires; tire-fixing sets comprised of tire patches and tire valves for vehicles; windows, safety windows, rearview mirrors and wing mirrors for vehicles; anti-skid chains for vehicles; luggage carriers for vehicles; bicycle and ski carriers for cars; saddles for bicycles or motorcycles; air pumps for vehicles, for inflating tires; anti-theft alarms for vehicles, horns for vehicles; safety belts for vehicle seats, air bags (safety devices for automobiles); rail vehicles namely locomotives, trains, trams, waggons, cable cars, chairlifts; vehicles for locomotion by water and by air, and their parts, other than their motors and engines.

2. European Union trade mark application No 18 025 810 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 025 810 (figurative mark). The opposition is based on European Union trade mark registration No 16 002 917 ‘AS PARTS’ (word mark). The opponent invoked Article 8(1)(a) and (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: Retail sales of automobiles; Retailing of windows for vehicles and for building, and parts and fittings for the fitting and placement thereof, and dissemination of advertising relating to the aforesaid articles; Import-export agencies and exportation of vehicles and public relations; Sales promotion for others of motor vehicles; Publicity and advertising by all means including the Internet; business consultation and retailing, including via the internet; Dissemination and exhibition of goods; Market research and studies.

The contested goods are the following:

Class 12: Motor land vehicles, motorcycles, mopeds; engines and motors for land vehicles; clutches, transmissions, transmission belts and transmission chains, gearing, gearboxes, brakes, brake discs and brake linings for land vehicles; vehicle chassis, automobile bonnets, vehicle suspension springs, shock absorbers for automobiles, steering wheels for vehicles, rims for vehicle wheels; bicycles and their bodies; handlebars and mudguards for bicycles; vehicle bodies; tipping bodies for trucks; trailers for tractors; frigorific bodies for land vehicles; trailer hitches for vehicles; vehicle seats; head-rests for vehicle seats; safety seats for children, for vehicles; seat covers for vehicles; vehicle covers (shaped); sun-blinds adapted for vehicles; direction signals and arms for direction signals for vehicles; windscreen wipers and wiper arms for vehicles; inner and outer tires for vehicle wheels; tubeless tires; tire-fixing sets comprised of tire patches and tire valves for vehicles; windows, safety windows, rearview mirrors and wing mirrors for vehicles; anti-skid chains for vehicles; luggage carriers for vehicles; bicycle and ski carriers for cars; saddles for bicycles or motorcycles; air pumps for vehicles, for inflating tires; anti-theft alarms for vehicles, horns for vehicles; safety belts for vehicle seats, air bags (safety devices for automobiles); baby carriages, wheelchairs, pushchairs; wheelbarrows; shopping carts; single or multi-wheeled wheelbarrows; shopping trolleys; grocery carts; handling carts; rail vehicles namely locomotives, trains, trams, waggons, cable cars, chairlifts; vehicles for locomotion by water and by air, and their parts, other than their motors and engines.

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 the opponent’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 goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods 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.

The opponent argues that the correct English translation of its services ‘retailing of windows for vehicles ... etc’ (originally listed in the application in Portuguese as ‘venda a retalho de vidros de veículos’) should be ‘retailing of glasses for vehicles …’ the scope of protection of which is broader, as it may include all types of glass and glass-made goods for vehicles, such as mirrors, while the former includes only windows. The Opposition Division will take this argument into account in the assessment of the goods and services.

Contested goods in Class 12

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T-390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T-365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find an average degree of similarity between the retail services of those goods and the goods themselves, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services, internet shopping, catalogue or mail order services in Class 35.

It is worth noting that a vehicle refers to any means of carriage, conveyance or transport (information extracted from Oxford English Dictionary on 05/11/2020 at https://www.oed.com/view/Entry/221903?result=1&rskey=wNJp1e&) and thus extends to planes, trains, ships and similar forms of transport.

The contested goods in Class 12 are essentially land, water and air vehicles and their parts. Therefore, the contested motor land vehicles (which goods include automobiles and are, thus, identical) are similar to the opponent’s retail sales of automobiles, for the reasons described above.

Furthermore, the contested windows, safety windows for vehicles; their parts, other than their motors and engines [i.e. of vehicles for locomotion by water and by air] are similar to the opponent’s retailing of windows for vehicles, and parts and fittings for the fitting and placement thereof, for the reasons described above.

Moreover, there is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

In addition, a low degree of similarity between the goods sold at retail and the other goods may be sufficient to find a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumers.

Therefore, the contested engines and motors for land vehicles; clutches, transmissions, transmission belts and transmission chains, gearing, gearboxes, brakes, brake discs and brake linings for land vehicles; vehicle chassis, automobile bonnets, vehicle suspension springs, shock absorbers for automobiles, steering wheels for vehicles, rims for vehicle wheels; vehicle bodies; bodies [bicycles]; sun-blinds adapted for vehicles; direction signals and arms for direction signals for vehicles; windscreen wipers and wiper arms for vehicles; inner and outer tires for vehicle wheels; tubeless tires; tire-fixing sets comprised of tire patches and tire valves for vehicles; rearview mirrors and wing mirrors for vehicles; anti-skid chains for vehicles; luggage carriers for vehicles; bicycle and ski carriers for cars; air pumps for vehicles, for inflating tires; anti-theft alarms for vehicles, horns for vehicles; safety belts for vehicle seats, air bags (safety devices for automobiles); frigorific bodies for land vehicles; trailer hitches for vehicles; vehicle seats; head-rests for vehicle seats; safety seats for children, for vehicles; seat covers for vehicles; vehicle covers (shaped); tipping bodies for trucks; trailers for tractors; handlebars and mudguards for bicycles; saddles for bicycles or motorcycles which are parts and accessories for vehicles, are similar to a low degree to the goods involved in the opponent’s services retail sales of automobiles or retailing of windows for vehicles, and parts and fittings for the fitting and placement thereof. These goods belong to the same market sector. Therefore, the goods and services can have the same distribution channels and target the same end users. Some of the goods in question may have further commonalities, as they could be complementary and be produced by the same undertakings.

The contested motorcycles, mopeds; bicycles; vehicles for locomotion by water and by air; rail vehicles namely locomotives, trains, trams, waggons, cable cars, chairlifts are also vehicles (that may have windows/vehicle glass). Therefore, these goods are also similar to a low degree to the opponent’s retailing of windows for vehicles, and parts and fittings for the fitting and placement thereof. They can have the same distribution channels and target the same end users. Some of the goods in question may be complementary and be produced by the same undertakings.

However, the contested baby carriages, wheelchairs, pushchairs; wheelbarrows; shopping carts; single or multi-wheeled wheelbarrows; shopping trolleys; grocery carts; handling carts are goods that do not have any relevant points in common with the opponent’s services, such as for example the retail sales of automobiles; retailing of windows for vehicles and for building, and parts and fittings for the fitting and placement thereof, and dissemination of advertising relating to the aforesaid articles. These contested goods are specific types of vehicles that are offered in specific types of establishments, focusing either on baby articles, DIY articles or selling carts/trolleys for supermarkets. Therefore, these contested goods and the opponent’s specific services do not usually have the same producers/providers or distribution channels, neither having the same end users. Moreover, they are not complementary or in competition. Furthermore, these goods do not have any similarities with the opponent’s remaining services, namely import-export agencies and exportation of vehicles and public relations; sales promotion for others of motor vehicles; publicity and advertising by all means including the Internet; business consultation and retailing, including via the internet; dissemination and exhibition of goods; market research and studies. These goods and services do not have the same nature and purpose, providers/producers, distribution channels or relevant public. Moreover, they are not complementary or in competition. 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 similar to various degrees 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, specialised nature, or terms and conditions of the goods and services purchased.

Taking into consideration the price of cars (or automobiles in the present case), 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).

c) The signs

AS PARTS
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.

The common elements ‘AS PART(S)’ are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public, for which these English words have no meaning.

The earlier sign is a word mark, ‘AS PARTS’. For the public under assessment, the element ‘AS’, on its own, would be understood as the highest card of each suit, or a person that excels at something (https://sjp.pwn.pl/szukaj/as.html). However, it has no direct or allusive meaning in relation to the relevant services, and therefore, it is distinctive. Neither has the element ‘PARTS’ any meaning for the public under analysis and, therefore, it is also distinctive.

The contested sign is a figurative mark, consisting of the verbal elements ‘AS’ in white uppercase standard letters and ‘Part’ in red capitalised standard letters on a blue and white backgrounds respectively, all placed within a rectangular blue frame with rounded corners. The element ‘AS’ will be perceived with the same meaning as in the earlier mark and is distinctive, as it has no meaning in relation to the relevant goods. ‘Part’ has no meaning for the public under assessment, as described above, and is, therefore, also distinctive.

Below this verbal/figurative element is the expression ‘Automotive Spare Parts’ in much smaller size. The verbal element ‘Automotive’ will be associated with the Polish word ‘auto’, meaning automobile, relating to cars and car production (https://dictionary.cambridge.org/dictionary/polish-english/auto). It is, therefore, weak for all the relevant goods, as listed above, as they cover various parts for vehicles. The verbal elements ‘SPARE’ and ‘PARTS’ have no meaning for the public under assessment and are, therefore, distinctive.

The contested sign also contains the registered trade mark symbol ‘®’, which is an informative indication that the sign is purportedly registered. It is not considered part of the trade mark as such. The blue rectangular frame is a less distinctive figurative element of a purely decorative nature.

The element ‘AS Part’ and the rectangle are the co-dominant elements of the contested sign, as they are the most eye-catching.

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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the verbal element ‘AS’ and ‘Part’, which are distinctive and constitute co-dominant elements of the contested sign. However, the marks differ in an additional letter ‘S’ at the end of the second verbal element of the earlier sign and in the additional verbal expression ‘Automotive (weak) Spare Parts (distinctive)’ and in the stylisation and figurative elements, which are however less distinctive, of the contested sign.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘AS’ and ‘Part’, which are distinctive and present identically in both signs. The pronunciation differs in the sound of the additional letter ‘S’ at the very end of the earlier sign, and in the sound of the expression ‘Automotive (weak) Spare Parts (distinctive)’ of the contested sign, which have no counterparts in the earlier mark. This latter verbal element is however unlikely to be pronounced by the relevant public due to its size and secondary position within the sign. As has been confirmed by case-law, consumers generally only refer to the dominant elements in trade marks (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44), and tend to shorten marks containing several words. Therefore, the contested sign will be referred to aurally only by the verbal element ‘AS PART’.

Therefore, the signs are aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public under assessment in the relevant territory, the element ‘AS’, included in both signs, will be associated with the meaning(s) explained above. To that extent, the signs are 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 under assessment in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) 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).

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 or economically linked undertakings.

In the present case, the goods and services are partly similar to various degrees and partly dissimilar. They are directed at the public at large and business consumers with a degree of attention that varies from average to high.

The marks are visually similar to an above-average degree, aurally highly similar and conceptually similar. The distinctiveness of the earlier mark is normal.

Consumers generally tends to focus on the beginning of a sign, as is the case here, when they encounter a trade mark, as described above. In the present case, the differing letter ‘S’ comes at the very end of the distinctive earlier mark ‘AS PARTS’, which is usually the part of a sign that does not attract the primary attention of the consumer.

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). 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).

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

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-speaking part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to the services of the earlier trade mark, even if only to a low degree. The low similarity of these goods and services is outweighed by the significant similarity between the marks.

The rest of the contested goods 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 cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods and services are obviously not identical.

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

The Opposition Division

Katarzyna ZANIECKA

Lena FRANKENBERG GLANTZ

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.