OPPOSITION No B 3 107 926

Zhejiang Gold Shock Absorber Co., Ltd, No. 101, Limin Road, Xuanqian Village, Tingtian Street, Ruian City, Zhejiang, People’s Republic of China (opponent), represented by Katerina Grišina, Anninmuizas Bulvaris 41-111, 1067 Riga, Latvia (professional representative)

a g a i n s t

Japanparts S.R.L., Via Della Meccanica 1/a, 37139 Verona, Fraz. Bassona (vr), Italy (applicant), represented by Mondial Marchi S.R.L., Via Olindo Malagodi 1, 44042 Cento (fe), Italy (professional representative).

On 10/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 107 926 is partially upheld, namely for the following contested goods:

Class 12: Suspension shock absorbers for vehicles; shock absorbers for automobiles; shock absorbing springs for vehicles.

2. European Union trade mark application No 18 119 516 is rejected for all the above goods. It may proceed for the remaining goods (Class 7).

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all of the goods of European Union trade mark application No 18 119 516 (figurative mark). The opposition is based on European Union trade mark registration No 14 357 594 (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

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

Class 12: Vehicles for locomotion by land, air, water or rail; clutches for land vehicles; shock absorbers for automobiles; motors for land vehicles; brake pads for automobiles; cycles; folding luggage barrows; automobile tires [tyres]; boats; upholstery for vehicles; automobile chassis.

The contested goods are the following:

Class 7: Shock absorbers for machines.

Class 12: Suspension shock absorbers for vehicles; shock absorbers for automobiles; shock absorbing springs for vehicles.

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 7

The contested shock absorbers for machines are not similar to the opponent’s goods as they do not target the same public and differ in purpose, method of use and distribution channels. Furthermore, they are not complementary. Although they can have the same nature as the opponent’s shock absorbers for automobiles, it is highly unlikely that they are sold in the same place to the same consumer (one is for use on a car, the other on industrial machinery). The end user of a car is not the usual purchaser of industrial machinery. Rather, shock absorbers in Class 12 are bought by companies that provide car repair/maintenance services. Goods intended for different publics cannot be complementary (22/06/2011, T‑76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30; 12/07/2012, T‑361/11, Dolphin, EU:T:2012:377, § 48).

Contested goods in Class 12

The contested shock absorbers for automobiles are identically included in both lists. Suspension shock absorbers for vehicles; shock absorbing springs for vehicles are identical as they can overlap with the opponent’s shock absorbers for automobiles.

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 found to be identical are directed at the public at large and at professionals in the automotive sector. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

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 coinciding word ‘GOLD’ is part of the basic English vocabulary and would therefore also be understood by non-English speakers (21/03/2011, T‑372/09, Gold Meister, EU:T:2011:97, § 32; 17/12/2019, R 1167/2019‑4, GOLDEN HORSE / POWER HORSE, § 21).

The world ‘gold’ refers to ‘a yellow precious metal’. It will be perceived as an indication of the high quality of the goods and, therefore, as a laudatory term. Consequently, it has a weak degree of distinctiveness.

The stylisation of the contested sign is rather standard and of a purely decorative nature. Therefore, it has no trade mark significance.

The figurative element of the earlier mark is not particularly imaginative and will merely be perceived as a curved abstract device. The figurative element of the contested sign is composed of a rectangle containing the word ‘GOLD’ in very small characters and a figurative device which is hard to decipher. Whether the figurative elements will be perceived as decorative or as banal remains to be seen, but they are less important than the verbal components, which generally have a stronger impact on the consumer. 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 earlier trade mark has no element that could be considered clearly more dominant than other elements, whereas in the contested mark the most dominant element is the verbal element ‘GOLD’ written in bold black upper-case letters.

Visually, the signs coincide in the word ‘GOLD’, which is repeated in the contested sign although in very small characters. The signs differ in their stylisation of the word ‘GOLD’ as described above, which will not, however, detract the consumers’ attention away from the verbal element. Furthermore, although the signs also differ in their figurative elements, these have much less impact in the overall impression produced by the signs.

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

Aurally, the pronunciation of the signs coincide in the word ‘GOLD’ and are, therefore, identical. Due to its subordinate position (in the contested sign), the additional word ‘GOLD’ will not be pronounced by the relevant consumers when referring to the signs verbally, as it would not make any sense to repeat the word twice (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75; 03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44; 03/07/2013, T‑243/12, Aloha 100% natural, EU:T:2013:344, § 34).

Conceptually, both signs will be associated with the same concept, that is, an allusion to the high quality of the designated goods. Therefore, they are conceptually identical.

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, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what was stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for the relevant goods, as it alludes to their alleged higher quality.

e) Global assessment, other arguments and conclusion

The goods are partly identical and partly dissimilar and target the public at large and professionals in the automotive sector. The degree of attention may vary from average to high. The signs are visually similar at least to an average degree, and aurally and conceptually identical.

The signs coincide in the word ‘GOLD’ and only differ in the depiction of the signs. The word ‘GOLD’ has a laudatory meaning for the relevant public since its use is widespread in the marketing of goods, referring to a superior quality. However, this does not necessarily prevent a finding that there is a likelihood of confusion, since the distinctiveness of the components of the trade marks (and the trade marks themselves) is only one factor among others involved in the assessment of likelihood of confusion. It follows that the signs are visually highly similar, and aurally and conceptually identical due to the identity of the verbal element.

The distinctiveness of the earlier mark is low. Although the earlier mark has a weak distinctive character this does not preclude, in itself, a finding that there is a likelihood of confusion (03/06/2015, T‑273/14, LITHOFIX, EU:T:2015:352, § 50; 27/04/2006, C‑235/05 P, Flexi Air, EU:C:2006:271, § 42-45). Although the distinctiveness of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61; 13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

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, it is likely that consumers will perceive the contested sign as a new depiction of the earlier trade mark or a different product segment specialising in shock absorbers.

It is highly conceivable that the relevant consumer, while noticing the differences between the signs, will perceive the contested mark as a variation of the earlier mark denoting the same commercial origin. Consumers could wrongly believe that the goods sold under the contested mark and those sold under the earlier mark are marketed by the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods (Class 7) 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.

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

Astrid Victoria WÄBER

Gonzalo BILBAO TEJADA

Beatrix STELTER

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.