OPPOSITION Nо B 3 094 006

 

Bfrv - Mediação Automóvel, Lda., Rua Ezequiel Silva Guimarães, 19, 4470-418 Vila Nova da Telha, Maia, 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

 

Euromuv Lda, Rua dos Quarteis, 80, 1º Esq., 1300-483 Lisboa, Portugal (applicant), represented by Gonçalo Almeida, Rua do Mar Vermelho, 2, 2.1, 1990-152 Lisboa, Portugal (professional representative).

On 31/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 094 006 is partially upheld, namely for the following contested goods and services :

 

Class 12: Self-propelled electric vehicle; electric cars; plug-in electric cars; electrically operated scooters; motor scooters; motorized and nonmotorized scooters for personal transportation; non-motorized scooters [vehicles]; two-wheeled vehicles; powered vehicles for use on land; two-wheeled motor vehicles; motor cars for transport on land; motor land vehicles; vehicles for use on land; vehicles for travel by land; road vehicles [for transportation]; electrically powered land vehicles; bodywork parts for vehicles; wheels, tyres and continuous tracks; brakes for vehicles; hydraulic couplings for land vehicles; panniers for motorcycles; motorcycle saddles; children's car seats; saddle covers for motorcycles; motorcycle chains; motorcycle kickstands; power take-off shafts for land vehicles; cycle cars. Class 37: Vehicle repair, maintenance and refuelling; motor vehicle maintenance and repair; provision of information relating to the maintenance of vehicles; provision of information relating to the repair of vehicles; providing information relating to the repair of land vehicles; providing information relating to the repair or maintenance of two-wheeled motor vehicles; maintenance and repair of land vehicles; motor vehicle maintenance; vehicle maintenance; maintenance of parts and fittings for commercial motor land vehicles; car maintenance; repair of couplings for land vehicles; maintenance and repair of motor vehicles and their engines; vehicle maintenance and repair; automobile repair and maintenance; maintenance and repair of electric vehicles; repair or maintenance of two-wheeled motor vehicles; maintenance and repair of motor vehicles and parts thereof.

2.

European Union trade mark application No 18 066 512 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 06/09/2019, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 066 512 (figurative mark). The opposition is based on Portuguese trade mark registration No 576 594 (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: Promotion; retail purchase and sale of cars through an online platform.

The contested goods and services are the following:

 

Class 12: Self-propelled electric vehicle; electric cars; plug-in electric cars; pedelecs; folding electric bicycles; motorised bicycles; balance bicycles [vehicles]; mopeds; self-balancing boards; self-balancing one-wheeled electric scooters; electric one wheel scooters; electrically operated scooters; motor scooters; motorized and non-motorized scooters for personal transportation; non-motorized scooters [vehicles]; pedal scooters; two-wheeled vehicles; powered vehicles for use on land; two-wheeled motor vehicles; motor cars for transport on land; motor land vehicles; vehicles for use on land; vehicles for travel by land; road vehicles [for transportation]; pedal driven land vehicles; electrically powered land vehicles; baskets for perambulators; bodywork parts for vehicles; wheels, tyres and continuous tracks; brakes for vehicles; fittings for bicycles for carrying luggage; hydraulic couplings for land vehicles; bags for bicycles; panniers for motorcycles; motorcycle saddles; delivery bicycles; children’s bicycle seats; children's car seats; bicycle bells; saddle covers for bicycles; saddle covers for bicycles or motorcycles; toe straps for use on bicycles; motorcycle chains; motorcycle kickstands; spindles of bicycles; power take-off shafts for land vehicles; bicycles; bicycle pedals; bicycle saddles; cycle cars; spokes for bicycle wheels; bicycle motors; gears for cycles; bicycle brakes; bicycle frames.

Class 37: Vehicle repair, maintenance and refuelling; motor vehicle maintenance and repair; provision of information relating to the maintenance of vehicles; provision of information relating to the repair of vehicles; providing information relating to the repair of bicycles; providing information relating to the repair of land vehicles; providing information relating to the repair or maintenance of two-wheeled motor vehicles; maintenance and repair of land vehicles; motor vehicle maintenance; vehicle maintenance; maintenance of parts and fittings for commercial motor land vehicles; car maintenance; repair of couplings for land vehicles; maintenance and repair of motor vehicles and their engines; vehicle maintenance and repair; automobile repair and maintenance; maintenance and repair of electric vehicles; repair or maintenance of two-wheeled motor vehicles; maintenance and repair of motor vehicles and parts thereof.

Class 39: Rental of means of transportation; car rental; rental of electric cars; rental of cycles; vehicle rental; rental of scooters for transportation purposes; motorcycle rental; rental of trams; motor vehicle rental; automobile vehicle renting services; motor vehicle hire services; motor land vehicle hire services; automobile rental reservation services; reservation services for vehicle rental.

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 12

 

There is a low degree of similarity between the retail services concerning specific goods and other goods which are 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 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.

Therefore, the contested self-propelled electric vehicle; electric cars; plug-in electric cars; electrically operated scooters; motor scooters; motorized and nonmotorized scooters for personal transportation; non-motorized scooters [vehicles]; two-wheeled vehicles; powered vehicles for use on land; two-wheeled motor vehicles; motor cars for transport on land; motor land vehicles; vehicles for use on land; vehicles for travel by land; road vehicles [for transportation]; electrically powered land vehicles; bodywork parts for vehicles; wheels, tyres and continuous tracks; brakes for vehicles; hydraulic couplings for land vehicles; panniers for motorcycles; motorcycle saddles; children's car seats; saddle covers for motorcycles; motorcycle chains; motorcycle kickstands; power take-off shafts for land vehicles; cycle cars are similar to at least a low degree to the opponent’s retail purchase and sale of cars through an online platform in Class 35.

However, the contested pedelecs; folding electric bicycles; motorised bicycles; balance bicycles [vehicles]; mopeds; self-balancing boards; self-balancing one-wheeled electric scooters; electric one wheel scooters; pedal scooters; pedal driven land vehicles; baskets for perambulators; fittings for bicycles for carrying luggage; bags for bicycles; delivery bicycles; children’s bicycle seats; bicycle bells; saddle covers for bicycles (listed twice); toe straps for use on bicycles; spindles of bicycles; bicycles; bicycle pedals; bicycle saddles; spokes for bicycle wheels; bicycle motors; gears for cycles; bicycle brakes; bicycle frames are not similar to the opponent’s retail purchase and sale of cars through an online platform.

Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. Here these conditions are not fulfilled. Furthermore, the goods and services at issue have different nature, and are neither in competition nor complementary.

These contested goods are also dissimilar with the opponent’s promotion in Class 35. They are fundamentally different in nature and purpose. They target different consumers and are manufactured/provided by different undertakings. They are neither in competition nor complementary.

Contested services in Class 37

The contested vehicle repair, maintenance and refuelling; motor vehicle maintenance and repair; provision of information relating to the maintenance of vehicles; provision of information relating to the repair of vehicles; providing information relating to the repair of land vehicles; providing information relating to the repair or maintenance of two-wheeled motor vehicles; maintenance and repair of land vehicles; motor vehicle maintenance; vehicle maintenance; maintenance of parts and fittings for commercial motor land vehicles; car maintenance; repair of couplings for land vehicles; maintenance and repair of motor vehicles and their engines; vehicle maintenance and repair; automobile repair and maintenance; maintenance and repair of electric vehicles; repair or maintenance of two-wheeled motor vehicles; maintenance and repair of motor vehicles and parts thereof are related to the opponent’s retail purchase and sale of cars through an online platform. The relevant public for the services at issue coincides. They are usually provided by the same undertakings. Further, providing information regarding a service is very closely related to that service as these services are normally provided by the same undertakings, through the same distribution channels and to the same relevant public. It follows that the services are considered to be similar to a low degree.

The contested providing information relating to the repair of bicycles is dissimilar to the opponent’s retail purchase and sale of cars through an online platform, since these services are not usually provided by the same undertakings. They are neither in competition with nor complementary to each other. These contested services are also dissimilar to the remaining opponent’s services, namely promotion in Class 35, which consists of providing others with assistance in the sale of their goods and services by helping their launch and/or sale, or of reinforcing a client’s position in the market. The nature and purpose of these services is very different. They have different method of use and do not share the same distribution channels. They are not provided by the same undertakings, and are neither complementary nor in competition.

Contested services in Class 39

The contested services are dissimilar to the opponent’s services in Class 35. Although the opponent’s services include retail purchase and sale of cars through an online platform, which have a connection to the extent that the contested services also relate to vehicles, this alone is not sufficient for the services in question to be considered similar, even to the lowest degree. The services have different natures (retail v rental and reservation). Their purpose is also clearly different, as the opponent’s services entail the transfer of title of the vehicle, while rental allows only for temporary use of the vehicle, for a fee. Moreover, the services are clearly not complementary. In this regard, it must be stated that services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other, in such a way that consumers may think that responsibility for provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). This is obviously not the case here. Retailers of vehicles do not usually render rental services and vice versa. In any case, the opponent did not provide evidence to the contrary. Finally, in the Opposition Division’s view, these services at issue cannot be regarded as being in competition, as they do not satisfy identical needs. People wishing to rent a car for a limited time (e.g. for the weekend) will not buy one if they do not find a satisfactory offer. Therefore, taking into account all the above, the services under comparison are dissimilar.

Further, these contested services are also dissimilar to the opponent’s promotion in Class 35, as their nature is very different. They serve different purposes, have different method of use and do not share the same distribution channels. They are not provided by the same manufacturers. They are neither complementary nor in competition.

  

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 varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention 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 the relevant goods as for example, 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).

 

c) Distinctiveness of the earlier mark and the comparison of signs 

Earlier trade mark	Contested sign

 

The relevant territory is Portugal.

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 verbal element ‘MUUV’, included in both signs, will not be associated with any meaning by the relevant public and is, therefore, distinctive.

Both signs include figurative elements depicted in white, and placed at their beginnings. They will not be associated with any clear and unequivocal concept and, are, therefore, distinctive. However, 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).

The verbal elements in both sign are depicted in a stylised white typeface on the four-sided shape background. The verbal and figurative elements in the earlier mark are portrayed over two lines. These referred features are inherently weak, since they will be perceived by consumers as mere ornamental elements in the signs.

Overall, it follows that the public will afford more trade mark significance to the verbal elements than to the signs’ stylization and figurative elements.

As regards the earlier mark, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Neither of the sign has an element that could be considered clearly more dominant (visually eye-catching) than other elements.

It follows that the signs are visually similar to a high degree and aurally identical. Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

 

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

d) 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 goods and services are partly similar to varying degrees and partly dissimilar. They target the public at large and professionals. The degree of attention of the relevant public will vary from average to high. The distinctiveness of the earlier mark is average. The signs are visually similar to a high degree, aurally identical, while a conceptual comparison is not possible.

Taking into account the aforementioned, and especially the fact that the contested sign reproduces the entirety of the verbal element of the earlier mark, the differences between the signs – consisting of the stylised typefaces and the figurative devices – are not sufficient to counteract their prominent similarities. Furthermore, 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).

Therefore, it is likely that the relevant consumer, on encountering both signs in relation to similar to varying degrees goods and services, and having an imperfect recollection of the contested sign, might think that the goods and services originate from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration No 576 594.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar to varying degrees to those 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

 

 

María del Carmen COBOS PALOMO

Marzena MACIAK

Marta GARCÍA COLLADO

 

 

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.