OPPOSITION Nо B 3 106 592

Volkswagen Aktiengesellschaft, Berliner Ring 2, 38440 Wolfsburg, Germany (opponent), represented by Dennemeyer & Associates, 55, rue des Bruyères, L-1274 Howald, Luxembourg (professional representative)

a g a i n s t

XTG Spółka Akcyjna, Tyniecka 5a, 52-407 Wrocław, Poland (applicant), represented by Wojciech Basiewicz, Piłsudskiego 12, 50-049 Wrocław, Poland (professional representative).

On 02/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 106 592 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

On 19/12/2019, the opponent filed an opposition against all the services of European Union trade mark application No 18 120 223 (figurative mark). The opposition is based on European Union trade mark registration No 17 954 175 ‘GTX’ (word 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 goods and services on which the opposition is based are the following:

Class 12: Vehicles and conveyances; vehicles for locomotion by land, and parts therefor; motorised land vehicles; driverless cars [autonomous cars]; motors and drives for land vehicles; propulsion mechanisms for land vehicles; chassis for vehicles; vehicle superstructures for vehicles; clutches for land vehicles; suspension shock absorbers for vehicles; shock absorbing springs for vehicles; pneumatic tyres; tires for vehicle wheels; rims for vehicle wheels; solid rubber tyres for vehicle wheels; wheeled vehicles; hubs for vehicle wheels; inner tubes for pneumatic tires; repair outfits for inner tubes, adhesive rubber patches for repairing tyre inner tubes, tires (non-skid devices for vehicle -); vehicle seats; rearview mirrors; head-rests for vehicle seats; anti-theft alarms for vehicles, anti-theft devices for vehicles; cigar lighters for automobiles; automotive vehicles; cars; vans; trailers and semi-trailers for vehicles, trailer hitches for vehicles; omnibuses; buses; caravans; parts and accessories for all the aforesaid goods, included in this class.

Class 35: Retailing and wholesaling relating to motor vehicles, motor vehicle parts and fittings, motors and engines and drives for land vehicles, chassis for land vehicles, vehicle superstructures and tyres for vehicle wheels; retailing and wholesaling for mail order relating to motor vehicles, motor vehicle parts and fittings, motors and engines and drives for land vehicles, chassis, vehicle superstructures and tyres for vehicle wheels; retailing and wholesaling via the internet relating to motor vehicles, motor vehicle parts and fittings, motors and engines and drives for land vehicles, chassis for vehicles, vehicle superstructures and tyres for vehicle wheels; retailing and wholesaling by means of teleshopping channels relating to motor vehicles, motor vehicle parts and fittings, motors and engines and drives for land vehicles, chassis for vehicles, vehicle superstructures and tyres for vehicle wheels; the bringing together, for the benefit of others, of a variety of motor vehicles, motor vehicle parts and fittings, motors and engines and drives for land vehicles, chassis for vehicles, vehicle superstructures and tyres for vehicle wheels (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; arranging of contracts, for others, for the buying and selling of motor vehicles, motor vehicle parts and fittings, motors and engines and drives for land vehicles, chassis for vehicles or vehicle superstructures and tyres for vehicle wheels; business administration and organisational administration of vehicle fleets, for others; advertising; radio and television advertising, organisation of trade fairs for commercial or advertising purposes, news clipping services; presentation of goods on communication media, for retail purposes; public relations services; auctioneering services; sales promotion for others.

Class 37: Building, construction and demolition; rental of tools, conversion, repair, disassembly, maintenance and upkeep of vehicles; vehicle breakdown repair services; custom conversion of motor vehicle bodies, chassis, motors and engines (tuning), included in Class 37; painting of vehicles; vehicle polishing; anti-rust treatment for vehicles; vehicle maintenance; vehicle cleaning; tyre repair; repair information; consultancy and information in relation to the aforesaid services, included in this class.

The contested services are the following:

Class 35: Retail services relating to batteries; wholesale services in relation to information technology equipment; retail services in relation to games; wholesale services in relation to games; retail services in relation to vehicles; retail services in relation to mobile phones; retail services in relation to smartphones; retail of third-party pre-paid cards for the purchase of telecommunication services; retail services in relation to domestic electrical equipment; retail services in relation to smartwatches; retail of third-party pre-paid cards for the purchase of multimedia content; retail services in relation to navigation devices; retail services relating to accumulators; retail services in relation to information technology equipment; retail services in relation to toys; retail services in relation to audio-visual equipment; retail services in relation to computer software; wholesale services in relation to audio-visual equipment; retail services in relation to domestic electronic equipment; retail services relating to audiovisual equipment; wholesale services in relation to computer software; wholesale services in relation to computer hardware; retail services in relation to wearable computers; retail services in relation to computer hardware.

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 contested retail services in relation to vehicles include, as a broader category, the opponent’s retailing relating to motor vehicles. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested retail services relating to batteries; retail services relating to accumulators refer to services relating to, inter alia, batteries and accumulators for electric vehicles. Batteries and accumulators are essential components for electric vehicles, such as electric cars and electric motorcycles. The contested services are included in the opponent’s broader category of retailing relating to motor vehicle parts. Therefore, they are identical.

Retail services of specific goods and retail services of other goods have the same nature as both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Similarity is found between those retail services where the specific goods concerned are commonly retailed together in the same outlets and they target the same public. However, the degree of similarity between retail of specific goods on the one hand and retail of other goods on the other hand may vary depending on the proximity of the retailed goods and the particularities of the respective market sectors. Therefore, similarity is excluded where the goods concerned are not commonly retailed together and target different publics, or are dissimilar. Nevertheless, a degree of similarity may still be found if, because of the particularities of the market, such dissimilar goods are retailed together in the same outlets and target the same public.

The contested retail services in relation to games; retail services in relation to mobile phones; retail services in relation to smartphones; retail of third-party pre-paid cards for the purchase of telecommunication services; retail services in relation to domestic electrical equipment; retail services in relation to smartwatches; retail of third-party pre-paid cards for the purchase of multimedia content; retail services in relation to navigation devices; retail services in relation to information technology equipment; retail services in relation to toys; retail services in relation to audio-visual equipment; retail services in relation to computer software; retail services in relation to domestic electronic equipment; retail services relating to audiovisual equipment; retail services in relation to wearable computers; retail services in relation to computer hardware are all dissimilar to the opponent’s retail services (including those provided via mail order, the internet and teleshopping channels) relating to motor vehicles, motor vehicle parts and fittings, motors and engines and drives for land vehicles, chassis for land vehicles, vehicle superstructures and tyres for vehicle wheels as well as the bringing together, for the benefit of others, of the aforementioned goods enabling customers to conveniently view and purchase those goods, covered in Class 35. Despite having the same nature, purpose and method of use, the goods concerned by these retail services are dissimilar, particularly because of their different nature, purpose, method of use, manufacturers and distribution channels. Moreover, they are not commonly retailed together. Therefore, there is insufficient proximity among the goods featured in the retail services under comparison that belong to different market sectors, that is to say, the contested retail services are quite removed from the automotive market sector to which the opponent’s services pertain. The aforementioned contested services are also dissimilar to the opponent’s remaining goods and services in Classes 12, 35 and 37, since they have nothing in common that could justify finding a level of similarity between them. In this respect, all the goods and services at issue have a different nature, purpose, method of use. They are neither complementary nor in competition. Furthermore, they differ in distribution channels, relevant public and usual producers/providers.

Furthermore, the contested wholesale services in relation to information technology equipment; wholesale services in relation to games; wholesale services in relation to audio-visual equipment; wholesale services in relation to computer software; wholesale services in relation to computer hardware are also all dissimilar to the opponent’s goods and services in Classes 12, 35 and 37. All these goods and services at issue have a different nature and purpose. They do not coincide in producer/provider or distribution channels, and target a different public. Furthermore, they are neither complementary nor in competition. Consequently, they have nothing in common that could justify finding a level of similarity.

The opponent argued that the earlier mark is registered for a broader category of services and that all the contested retail services are allegedly either identical, or that there is at least a certain degree of similarity. However, these arguments must be rejected. The opponent’s retail services relate to motor vehicles, as well as parts and fittings thereof. Therefore, all retailed goods are included in Class 12, whilst the contested retail services (with the exception of the retail services found to be identical) relate to goods in Class 9, which means the contested services are not included in the broader category of the opponent’s services.

It is true that the retail and wholesale services under comparison concern goods that are specified without a class number of the Nice Classification. Nevertheless, the comparison of goods and services must be based on the usual and literal meaning of the terms in the specification. In this regard, the goods featured in the opponent’s retail and wholesale services, such as motor vehicle parts and fittings, do not encompass vehicle accessories. Unlike parts, components and fittings, an accessory, while usually used in close connection with the main product, does not constitute an integral part of it. In contrast, some of the goods concerned in the contested retail and wholesale services include vehicle accessories. For example, information technology equipment includes global positioning system apparatus, navigation devices include onboard computers for vehicles, and audiovisual equipment includes car stereo systems. These goods do not belong to the automotive industry. The foregoing goods featured in the contested retail and wholesale services, albeit intended for use with vehicles, belong to the market sector of electronics and information technology. From a commercial perspective, such vehicle accessories are extras that improve or complete the use of the main product they are added to, that is to say, the motor vehicle. Consumers do not expect that these goods commonly originate from the same producers and do not usually seek them in the same sales outlets. Even though vehicle accessories can, in some cases, be sold by car dealers, or retailers of car parts, in the absence of a convincing line of argument and evidence to this effect, the Opposition Division finds that this is not the usual practice on the market. Contrary to the opponent’s arguments, there is no similarity between the abovementioned contested retail and wholesale services and those covered by the opponent’s due to the lack of proximity of the goods they relate to.

In its observations, the opponent further alleged a similarity of some of the contested services to the opponent’s presentation of goods on communication media, for retail purposes, public relations services, auctioneering services and sales promotion for others. However, all the opponent’s services either belong to the category of advertising and promotional services or concern the buying or selling of products at an auction. Advertising and promotional services consist of helping others to sell their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. Many different means and products might be used to achieve these goals. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their goods and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. Auctioneering services refer to selling products at an auction, that is to say, sales where goods are sold to the highest bidder.

Therefore, the services invoked by the opponent are fundamentally different from the contested retail and wholesale services, although the advertised and/or auctioned goods may be the same. Therefore, the opponent’s observations do not allow to conclude any relevant degree of similarity between the remaining contested services and any of the opponent’s goods and services, within the meaning of Article 8(1)(b) EUTMR, and the opponent’s arguments must, thus, be rejected.

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 services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise in the automotive industry.

Taking into consideration the price of the goods to which the services at issue relate, consumers are likely to pay a higher degree of attention than for less expensive purchases, or purchases that have no impact on the functioning of their vehicle. These consumers will not buy motor vehicles, batteries and accumulators, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. Therefore, it is considered that the relevant public’s degree of attention is above average.

c) The signs

GTX
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 contested sign is composed of the letters ‘XTG’, depicted in a stylised typeface in red and white letters, the last letter being slightly larger than the first two letters. There is a figurative element following them, made up of two curved lines forming a device that resembles the Wi-Fi symbol. None of the elements is visually dominant (more eye-catching) than the others. The figurative element has no distinctiveness in itself as it is safe to assume that the relevant public would merely perceive it as providing information about the kind and availability of the services in question, namely that they can be used and/or accessed via wireless network connections.

The letter combinations ‘GTX’ and ‘XTG’ of the signs at issue have no meaning for the relevant public and are, therefore, distinctive. It follows that the conceptual aspect does not influence the assessment of the similarity of the signs.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

In the present case, both signs contain three letters. Consequently, both marks are short marks.

Visually, the signs coincide in their second letter, ‘T’, and in the fact that they are both made up of two identical additional letters, namely ‘G’ and ‘X’. However, they differ in the positions of the letters, ‘G’ and ‘X’, which has a significant impact on the overall impression produced by each sign. The signs further differ in the stylised letters ‘XTG’ and the additional figurative element of the contested sign, although the impact of these differences is reduced on account of the fact that the stylisation is not particularly unusual or elaborate and that the figurative element is devoid of distinctiveness.

The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121). In the present case, although the verbal element of the contested sign is an anagram of the earlier mark, and both signs share the same number of letters, it is safe to assume that the relevant public will notice the different letters at the beginning and the ending, especially since the letters ‘G’ and ‘X’ have no visual resemblance. Furthermore, the letter ‘X’, being quite striking, will not go unnoticed either in the signs’ beginning or ending.

Therefore, the signs are visually similar to a low degree only.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of their three letters – ‘G’, ‘T’ and ‘X’. However, the positions of the letter ‘G’ and the letter ‘X’ are different, and both the beginning as well as the ending of the signs are totally different from an aural point of view. In view of these differences, and taking into account that the public normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23), any audible similarity resulting from the identical letter ‘T’ must be weighed against the impact of the different letters. Consequently, the signs are aurally similar to a low degree.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to substantiate such a claim.

Enhanced distinctiveness of an individual mark means that the relevant public recognises the mark as having an enhanced ability or a high capacity to identify the goods or services for which it is registered as coming from a particular undertaking. Mere knowledge or recognition of the mark by the relevant public as, for instance a certification mark, is not sufficient. The enhanced recognition of a mark must be related to its essential function, which is to indicate commercial origin. Enhanced distinctiveness of the mark is the result of its use in accordance with its essential function (07/06/2018, T‑807/16, N & NF TRADING / NF ENVIRONNEMENT (fig.) et al., EU:T:2018:337). Substantiation is defined by Article 7(2) EUTMDR and refers to the proof of existence, validity and scope of protection of the earlier mark(s) or right(s), and the proof of entitlement to file the opposition. Where relevant for the opposition, as in the present case, the opponent must also submit evidence of enhanced distinctiveness or any other aspect affecting the scope of protection of its earlier right(s).

In its observations of 20/07/2020, the opponent merely stated ‘its marks (including the GTX-series) generally enjoy a rather high degree of recognition and attention amongst the relevant public as Volkswagen AG is Europe’s biggest car manufacturer and as such is known to the public’. However, there is no evidence in order to substantiate such a claim.

In the absence of any evidence showing that the earlier mark had acquired enhanced distinctiveness at the time of filing (or priority date) of the contested EUTM application as a consequence of the use that the opponent has made of it, 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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The risk that the relevant public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion. The existence thereof must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22), in particular the degree of similarity between the trade marks and between the goods or services covered, the distinctiveness of the earlier mark (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19-20), and also the likelihood of association between the signs (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

For the reasons explained above, the services are partly identical and partly dissimilar. Given that the similarity of the goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on that article and directed against the contested services found to be dissimilar cannot be upheld.

The remaining services found to be identical target the public at large as well as professionals with specific knowledge or expertise. The public’s degree of attention is above average. The marks are visually and aurally similar to a low degree. The conceptual comparison does not influence the assessment of the similarity of the signs. Both signs are short marks. In this respect, the fact that they differ in their first and last letters, and that they only share their second letter, ‘T’, is a relevant factor to consider when evaluating the likelihood of confusion between the signs.

Even though the marks contain the same letters, only the second letter ‘T’ appears in the same position, and the different positions of the letters ‘G’ and ‘X’ within the marks result in considerable differences in the visual appearance and the aural pattern of the signs. As set out above, the shorter a sign, the more easily the public is able to perceive all its single elements and, therefore, the different beginning and the different ending of the signs at issue will not go unnoticed. Albeit of limited impact, the signs further differ in the stylisation and the non-distinctive figurative element of the contested sign, which have no counterparts in the earlier mark.

Considering that the public normally perceives a mark as a whole and does not proceed to analyse its various details, any visual and audible similarity resulting from the identical second letter ‘T’ and the mere existence of the letters ‘G’ and ‘X’ in both signs is, therefore, unlikely to make the consumers believe that the services originate from the same undertaking or from economically linked undertakings. The signs are very short, which enables consumers to easily perceive their differences (13/02/2007, T‑353/04, Curon, EU:T:2007:47, § 70), which is particularly true in the present case where the degree of attention displayed by the relevant public is above average – a factor that weighs against the fact that the services are identical.

Considering all the above, there is no likelihood of confusion.

Therefore, the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Solveiga BIEZA

Philipp HOMANN

Andrea VALISA

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.