OPPOSITION Nо B 3 121 618

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

Airwheel Poland s.c., ul. Traugutta 135, 44-120 Pyskowice, Poland (applicant), represented by Paweł Głąb, Kancelaria Prawna Kantorowski, Głąb i Wspólnicy sp.k. Siemieńskiego 14, 35-234 Rzeszów, Poland (professional representative).

On 13/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 121 618 is upheld for all the contested goods.

2. European Union trade mark application No 18 159 302 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

On 18/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 159 302 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 17 940 929 for the word mark ‘LIFE’. 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 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, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 17 940 929 for the word mark ‘LIFE’.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 12: Vehicles and conveyances; clutches for land vehicles.

The contested goods are the following:

Class 12: Push scooters [vehicles]; electric vehicles; parts and fittings for vehicles; self balancing electric scooters; self-balancing one-wheeled electric scooters; electrically operated wheelchairs; mobility scooters; electrically operated scooters; electric one wheel scooters; scooters [for transportation]; electrically operated scooters; motorised scooters for the disabled and those with mobility difficulties; motorised buggies for the disabled and those with mobility difficulties; motorised wheelchairs for the disabled and those with mobility difficulties; electric vehicles; electric vehicles.

The contested push scooters [vehicles]; self balancing electric scooters; self-balancing one-wheeled electric scooters; electrically operated wheelchairs; mobility scooters; electrically operated scooters; electric one wheel scooters; scooters [for transportation]; electrically operated scooters; motorised scooters for the disabled and those with mobility difficulties; motorised buggies for the disabled and those with mobility difficulties; motorised wheelchairs for the disabled and those with mobility difficulties; electric vehicles (listed three times) are included in the broad category of the opponent’s vehicles and conveyances. Therefore, they are identical, contrary to the applicant’s assertions.

The contested parts and fittings for vehicles include, as a broader category, the opponent’s clutches for land vehicles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 in question.

In the present case, the goods found to be identical 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 specialised nature of the goods, the frequency of purchase and their price. In particular, given the price of certain various vehicles, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers would not buy a vehicle, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The relevant consumer will be an informed one, taking into consideration all relevant factors, such as 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

LIFE
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 signs’ coinciding verbal element, ‘LIFE’, and the contested sign’s verbal element ‘TECH’ are meaningful in certain territories, for example in those countries where English is understood. This affects the perception of the signs by that public and influences the assessment of likelihood of confusion since the signs are more similar overall if there is a conceptual similarity between them. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is the word ‘LIFE’. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). The earlier mark in question does not deviate from the usual way of writing since it is written in upper case, which is a fairly common way of depicting words.

The earlier mark’s verbal element, ‘LIFE’, is an English word, which means, inter alia, ‘the quality which people, animals, and plants have when they are not dead, and which objects and substances do not have’ (information extracted from Collins English Dictionary on 04/08/2021 at https://www.collinsdictionary.com/dictionary/english/life). The word ‘LIFE’ is a basic English word and will be understood not only by native English speakers, but also by the public with a rudimentary knowledge of English, as the applicant contends (see, to this effect, 12/02/2015, T‑318/13, LIFEDATA, EU:T:2015:96, § 22; 15/10/2018, T‑444/17, life coins / LIFE et al., EU:T:2018:681, § 52). The verbal element ‘LIFE’ is not descriptive, allusive or otherwise weak for the relevant goods in Class 12 and is, therefore, distinctive.

Contrary to the applicant’s assertions, the mere fact that the word ‘LIFE’ is popular and will be understood throughout the territory of the European Union does not automatically mean that it possesses a low degree of distinctiveness, insofar as, in the present case, it does not describe or allude to any characteristics of the goods. In this regard, it is settled case-law that the applicant is allowed to submit evidence demonstrating that consumers have been exposed to widespread use of, and become accustomed to, trade marks that include the element in question in order to prove that the element in question has a low degree of distinctiveness (13/04/2011, T‑358/09, Toro de Piedra, EU:T:2011:174, § 35; 08/03/2013, T‑498/10, David Mayer, EU:T:2013:117, § 77-79). However, it is not the case in the present proceedings.

The contested sign is a figurative mark consisting of the verbal element ‘TECHLIFE’. Although it is composed of one verbal element, the relevant consumers, when perceiving that sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In view of this principle, and due to the visual separation created by the usage of different colouring, the relevant public under examination will break it down into the verbal components ‘TECH’ and ‘LIFE’.

The contested sign’s initial verbal element, ‘TECH’, will be perceived as short for the word ‘technology’ (information extracted from Collins English Dictionary on 04/08/2021 at https://www.collinsdictionary.com/dictionary/english/tech). Contrary to the applicant’s assertions, this verbal element is weak in relation to the goods at issue in Class 12, insofar as it suggests that the vehicles as well as parts and fittings therefor are technological in nature, which is likely to be understood as an allusion to the fact that they are technologically advanced and/or incorporate high-tech features. The contested sign’s second verbal element, ‘LIFE’, has a meaning and a degree of distinctiveness as described above, also in relation to the contested goods.

The typefaces in the contested sign are rather standard and commonplace, with the exception of the two letters ‘E’, which have a certain degree of stylisation since the upper part of their vertical bar is missing. Nonetheless, this degree of stylisation does not prevent the immediate recognition of these letters. Therefore, the relatively standard typeface of the contested sign will be perceived as purely decorative, as it is usual in the market sector for a sign’s verbal elements to be slightly stylised.

The contested sign has no element that could be considered clearly more dominant than other elements.

The applicant argued that, according to established legal practice, consumers are considered to pay more attention to the beginning of a mark. This consideration cannot prevail in all cases and cannot undermine the principle that an examination of the signs’ similarity must take account of the most distinctive elements of those signs and that descriptive elements are to be accorded less importance in the overall impression (13/07/2012, T‑255/09, La Caixa, EU:T:2012:383, § 79; 13/09/2010, T‑366/07, P&G Prestige beauté, EU:T:2010:394, § 65). According to case-law, although consumers often attach importance to the first part of words, their visual attention may just as easily focus on the last letters of the signs (13/07/2017, T‑189/16, CReMESPRESSO (fig.) / CREMESSO, EU:T:2017:488, § 49). This is particularly true in this case, as the initial component ‘TECH’ of the contested sign is weakly distinctive. Therefore, the relevant public will concentrate its attention on the remaining part of that sign – ‘LIFE’ – despite its less prominent position.

Visually and aurally, the signs coincide in the word ‘LIFE’ (and its sound). This word has an average degree of distinctiveness and is the sole element of the earlier mark and the second component of the contested sign. They differ in the first verbal element ‘TECH’ of the contested sign (and its sound), which has no counterpart in the earlier mark. However, this verbal element is weak in relation to the goods at issue and, therefore, plays a lesser role in the comparison of the signs.

The signs also differ visually in the figurative aspects of the contested sign, including its stylisation. However, these differences do not outweigh the visual similarity between the signs. This is because the verbal elements of the contested sign will attract the public’s attention to a greater extent and will be perceived as the main indicator of the commercial origin of the relevant goods, whereas the figurative aspects of the sign will be perceived essentially as graphic embellishment.

Despite their differing lengths and their difference being at the beginning of the contested sign, the contested sign entirely reproduces the sole element of the earlier mark, which is fully distinctive in both signs and performs an independent role therein. Bearing all the above in mind, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with the same meaning conveyed by the word ‘LIFE’. They differ in the concept evoked by the verbal element ‘TECH’ of the contested sign. However, the impact of this semantic content is not considered to be very important, given that it is produced by a component which is weakly distinctive. Therefore, the signs are conceptually similar to an average 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 prove such a claim. In addition, it alleged that the earlier trade mark enjoys a high inherent distinctiveness per se, insofar as the word ‘LIFE’ is not descriptive and is unique for the goods concerned.

However, it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive and/or weak), to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49). However, a mark will not necessarily have a higher degree of distinctiveness just because there is no conceptual link to the relevant goods (16/05/2013, C‑379/12 P, H.Eich / SILVIAN HEACH (fig.), EU:C:2013:317, § 71).

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 goods in question from the perspective of the public under examination 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 likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier marks on the market, the association that can be made with the registered marks, and the degree of similarity between the marks, and between the goods identified. It must be appreciated globally, taking into account all the 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).

The goods are identical. According to case-law, when the goods covered by the signs at issue are identical, the degree of difference between the signs must be high to exclude a likelihood of confusion (13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 53).

The inherent distinctiveness of the earlier mark is normal. The goods target the public at large and a professional public. The public’s degree of attentiveness may vary from average to high.

The signs are visually, aurally and conceptually similar to an average degree on account of their coinciding verbal element, ‘LIFE’, which is the sole element of the earlier mark and the second component of the contested sign. Although the difference between the signs is at the beginning of the contested sign, the second component ‘LIFE’ still performs an independent and distinctive role within the mark. Moreover, this word is meaningful in both signs, it will be understood by the relevant public and its presence will immediately be noticed. An examination of the similarity between the marks must take account of the overall impression produced by those marks, since the average consumer normally perceives a mark as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2012:324, § 52; 15/07/2015, R 3080/2014‑2, KOPPARBRIGHT / ParBright, § 54). In addition, marks are similar when they are at least partly identical in one or more relevant aspects (24/11/2016, T‑250/15, CLAN / CLAN MACGREGOR, EU:T:2016:678, § 55). Moreover, the signs differ in the figurative aspects of the contested sign, including its stylisation, which are of limited importance in the overall impression created by that sign. Therefore, despite the different first component ‘TECH’ of the contested sign, which is weakly distinctive, the overall impression of the signs on the relevant public is similar.

Taking into account all the above, and especially the similarities between the signs and the identity between the goods, it is considered that there is a likelihood of confusion in the form of a likelihood of association. 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 covered are from the same or economically linked undertakings.

The relevant goods in Class 12 belong to a market sector in which it is common to create sub-brands, namely variations of the main brand that include additional verbal elements. Due to the use of the identical verbal element ‘LIFE’, 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), as the contested sign may be perceived as a new version, belonging to the same ‘house’ brand ‘LIFE’.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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. There is no need to analyse the remaining parts of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 940 929. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier opponent’s European Union trade mark registration No 17 940 929 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

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

The Opposition Division

Gueorgui IVANOV

Anna PĘKAŁA

Ivo TSENKOV

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.