of the Fourth Board of Appeal
of 4 December 2015
In Case R 1945/2014-4
Ziarelli Mario Ricostruzione Gomme S.r.l.
Via Martiri Di Gubbio, No. 2
represented by Studio Legale Boni Caforio Bonucci Grano, Via Galeazzo Alessi 31, I‑06122 Perugia, Italy
Pirelli & C. S.p.A.
Viale Piero E Alberto Pirelli 25
represented by Wirsing Hass Zoller, Maximilianstr. 35, D-80539 München, Germany
APPEAL relating to Cancellation Proceedings No 7673 C (Community trade mark No 9 744 723)
The Fourth Board of Appeal
composed of D. Schennen (Chairman), L. Marijnissen (Rapporteur) and F. López de Rego (Member)
Registrar: H. Dijkema
gives the following
On 29 June 2011, Ziarelli Mario Ricostruzione Gomme S.r.l. (‘the CTM proprietor’) obtained registration of the word mark
filed on 17 February 2011 as a Community trade mark for the following goods and services:
Class 12 – Tyres; Tire covers; Casings for pneumatic tires (tyres); Studs for tires (tyres); Inner tubes for vehicle tires; Inner tubes for tyres; Automobile tires [tyres];Vehicle wheel tyres; Remoulded tyres; Vehicle tires;
Class 17 – Rubber material for recapping tyres;
Class 37 – Vehicle tyre fitting and repair; Retreading of tyres; Vulcanization of tyres (repair); Vehicle maintenance; Motor vehicle maintenance; Vehicle repair and maintenance; Repair and maintenance of vehicles; Motor vehicle maintenance and repair services; Repair and maintenance services.
On 28 February 2013, PIRELLI & C. S.p.A. (‘the cancellation applicant’) filed an application for a declaration of invalidity of the abovementioned Community trade mark for all the goods and services on the basis of Article 53(1)(a) CTMR arguing that the contested mark had been registered contrary to Article 8(1)(b) and (5) CTMR. It was based, among others, on Community trade mark No 9 483 173 for the word mark
filed on 29 October 2010 and registered on 12 May 2011 for goods and services in all classes, including:
Class 12 – Vehicles; Apparatus for locomotion by land, air or water;
Class 17 – Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; Plastics in extruded form for use in manufacture; Packing, stopping and insulating materials; Flexible pipes, not of metal;
Class 37 – Building construction; Repair; Installation services.
Reputation was claimed in the European Union, including Germany and Italy, for all the goods and services.
The invalidity request was filed against all the goods and services of the contested mark and was based on all the goods and services of the earlier marks. Extensive evidence was filed in support of the claimed reputation.
By decision of 28 May 2014, the Cancellation Division, based on the above indicated earlier Community trade mark, upheld the application for declaration of invalidity, declared the Community trade mark invalid in its entirety and ordered the CTM proprietor to bear the costs.
It reasoned that the conflicting goods and services are identical. The signs in question were found visually and phonetically similar due to their coincidence in the letter combination ‘I-RELLI’. Conceptually, it considered that both signs would be seen as two different surnames by the Italian-speaking part of the public and that no particular concept would be attached thereto by the rest of the relevant consumers; the signs have, thus, no concept in common.
It further reasoned that the goods and services in question are directed both at the public at large and at business consumers with a specific professional knowledge or expertise. The inherent distinctiveness of the earlier trade mark was considered to be normal and the cancellation applicant’s claim and evidence on enhanced distinctiveness was not evaluated for reasons of procedural economy.
It concluded that as both signs are relatively long marks in which additional letters have less impact in the overall impression and as the appearance of a ‘double LL’ is unusual in some EU languages such as the Slavic and Baltic languages, the similarities between the signs are sufficient for a likelihood of confusion. The fact that the parties have done business together in the past does not mean that a likelihood of confusion does not exist.
On 27 July 2014, the CTM proprietor filed a notice of appeal, followed by a statement of grounds on 29 September 2014. It requests that the Board annul the contested decision and confirm the validity of the contested mark for all the contested goods and services.
It argues that the contested decision is a violation of Article 2 of the Italian Constitution recognizing the inviolable rights of a person. The right to a name is a constitutional right and it goes beyond the identification of a person. Moreover, it argues that in view of an existing business relationship between the parties in the past, the cancellation applicant was perfectly aware that the spare parts sold by the cancellation applicant to the CTM proprietor would be used in order to build retreaded tires.
As to the comparison of the goods and services, it argues that there is no evidence on file that would indicate that the cancellation applicant has used the word mark ‘Pirelli’ in the retreading tyre business. This means that the goods and services at issue are dissimilar. As to the relevant public, it is argued that the goods and services are exclusively addressed to professional consumers and that, with the differences of the signs located in the beginning of the marks to which consumers are used to pay more attention, a likelihood of confusion does not exist.
In reply, the cancellation applicant requests that the Board dismiss the appeal, confirm the contested decision and order the CTM proprietor to bear the costs. It maintains that there is a likelihood of confusion on the relevant part of the public and repeats its arguments relating to Article 8(5) CTMR as raised before the Cancellation Division.
The appeal is admissible but not well founded. The invalidity request succeeds as a likelihood of confusion within the meaning of Article 8(1)(b) CTMR exists.
Pursuant to Article 53(1)(a) CTMR in conjunction with Article 8(1)(b) CTMR, a Community trade mark shall be declared invalid on application to the Office by the proprietor of an earlier Community or national trade mark if because of its identity with or similarity to the earlier trade mark and, cumulatively, the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
The invalidity request is based on an earlier Community trade mark and two international registrations. Like the Cancellation Division did, the Board will first examine earlier Community trade mark No 9 483 173 for the word ‘PIRELLI’.
The relevant territory for analysing the likelihood of confusion is the European Union. Due to its unitary character it is already sufficient for a Community trade mark to be declared invalid if a likelihood of confusion occurs in the mind of the public of one Member State of the European Union (09/03/2005, T-33/03, Hai, EU:T:2005:89, § 39; 22/03/2007, T-322/05, Terranus, EU:T:2007:94, § 29). The Board will focus on the perception of the non-Italian-speaking part of the relevant public and will exclude Italy and the Italian-speaking public from its assessment.
Comparison of goods and services
The assessment of the similarity of goods and services must take into account all relevant factors, which include the nature, their purpose and method of use, and whether they are in competition with each other or complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example the distribution channels of the goods concerned (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 37). The reference point is whether the relevant public would perceive the relevant products as having a common commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38) and whether consumers consider it normal that the goods are marketed under the same trade mark, which normally implies that a large number of producers or distributors of these products are the same (11/07/2007, T-150/04, Tosca Blu, EU:T:2007:214, § 37).
The CTM proprietor’s argument that the cancellation applicant is not active in the sector of retreading tyres does not have any impact on the comparison of the goods and services at stake. The earlier mark does not fall under the proof of use obligation. Consequently, the goods and services of the earlier Community trade mark to be compared are exactly those for which the mark is registered and which are invoked as a basis for the cancellation request filed.
In accordance with the Communication No 4/03 of the President of OHIM of 16 June 2003 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations, use of all the general indications listed in the class heading of a particular class constitutes a claim of all goods and services falling within this particular class (first paragraph of Point IV of this Communication). This has been confirmed by Communication No 2/12 of the President of OHIM of 20 June 2012 where it is indicated that for Community trade marks registered before that date the Office considers that the intention of the applicant was that a class heading covers all the goods or services included in the alphabetical list of that class (Point V of Communication 2/12). The protection of the earlier trade mark for all the goods of the alphabetical list in Class 12 of the Nice Classification at its 9th Edition has also been confirmed by the General Court by a judgment dated 31/01/2013, T‑66/11, Babilu, EU:T:2013:48, § 50.
Since the earlier Community trade mark is registered for all the general indications listed in Class 12, the contested goods in Class 12 ‘Tyres; Tire covers; Casings for pneumatic tires (tyres); Studs for tires (tyres); Inner tubes for vehicle tires; Inner tubes for tyres; Automobile tires [tyres];Vehicle wheel tyres; Remoulded tyres; Vehicle tires’ are identical to some goods included in the alphabetic list of that Class 12, namely ‘tires for vehicle wheels, casing for pneumatic tires (tyres) and inner tubes for pneumatic tyres (tyres). This was not challenged by the appellant.
The contested goods in Class 17 are identical to those of the earlier Community trade mark because ‘Rubber material for recapping tyres’ is contained within the broader specification ‘rubber’.
As correctly reasoned by the Cancellation Division, the contested services in Class 37 are identical to the earlier services ‘repair’. The CTM proprietor has not brought forward any argument to the contrary.
The contested Class 37 services ‘Vehicle tyre fitting and repair; retreading of tyres; Vulcanization of tyres (repair); Vehicle maintenance; Motor vehicle maintenance; Vehicle repair and maintenance; Repair and maintenance of vehicles; Motor vehicle maintenance and repair services’ are also similar to the earlier goods in Class 12. These services are all related to the broad category of the cancellation applicant’s goods in Class 12 which include tyres and parts of tyres. It is not unusual to see a provider of repair services (e.g. a garage owner) selling retreaded or new tyres as well as that a car manufacturer provides also maintenance and repair services for vehicles (also to those cars manufactured by other companies). Therefore, these contested services are also considered to be similar to the goods protected under the cancellation applicant’s mark in Class 12 due to the important degree of complementarity (26/01/2006, T‑317/03, Variant, EU:T:2006:27, § 44).
Comparison of signs
The assessment of the visual, phonetic 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. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 23; 06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28).
The following word marks are to be compared:
Visually, the conflicting signs feature a similar number of letters, namely eight and seven respectively, six of which are identical ‘I*RELLI’. They coincide for the most part and only differ in their initial letters ‘Z’ and ‘P’ and the additional letter ‘A’ which appears within the contested mark before the common pattern ‘-RELLI’. Even taking into consideration that the beginning of a mark normally catches the consumer’s attention, the conflicting signs are visually similar to an average degree, at least.
Aurally, the signs also have a similar structure and six letters in common in the same position. They are similar to an average degree to the extent that they coincide in the syllables /RE//LLI/ and the identical reproduction in the first syllables of the vowel ‘I’. This gives the signs in question a very similar rhythm and intonation, in spite of the presence of the letter ‘A’ in the contested mark.
In relation to the proprietor’s argument that the beginning of a sign is of more importance than the ending in the overall impression created by the signs, it must be recalled that that consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the marks must take account of the overall impression produced by those marks. In the overall impression given by the conflicting marks in question, the different number of syllables and the diverging initial parts are not enough to outweigh the visual or phonetic similarity stemming from the identity of all the other letters (26/01/2006, T‑317/03, Variant, EU:T:2006:27, § 51; 16/05/2007, T‑158/05, Alltrek, EU:T:2007:143, 16/05/2007, T‑158/05, Alltrek, EU:T:2007:143, 70).
Conceptually, neither the word ‘ZIARELLI’ nor the word ‘PIRELLI’ has a meaning. Even if both terms might be identified by part of the public as being of Italian origin, or even as family names in this language, this does not render them conceptually similar. Being a family name does not convey any particular concept. Consequently, the conceptual comparison remains neutral.
Global assessment of likelihood of confusion
According to the case-law of the Court of Justice, the risk that the 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. It follows from the very wording of Article 8(1)(b) CTMR that the concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).
A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s level of attention is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38).
Since the word ‘PIRELLI’ has no relationship what so ever with the goods and services for which it is registered, and as it does not inherently convey any particular concept to consumers, it has per se a normal degree of distinctive character. The cancellation applicant claimed that its earlier trade marks have an enhanced degree of distinctive character acquired through intensive use but there is no need to assess the evidence and documents provided in support of this claim as a likelihood of confusion exists on account of the merely average inherent level of distinctiveness of the earlier mark.
The relevant public for the relevant goods and services in Classes 12, 17 and 37 which are found to be identical and similar to those of the earlier trade mark includes the public at large. Consequently, the CTM proprietor’s argument on an increased level of attention of the relevant public which would exclusively address the professional consumer fails.
Taking into account the visual and aural similarity of the conflicting signs, the fact that all the contested goods and services are identical, and part of it also similar, to the earlier goods and services, the normal level of attentiveness of the relevant consumer and the normal level of inherent distinctiveness of the earlier mark, there exists a likelihood of confusion within the meaning of Article 8(1)(b) CTMR for the non-Italian speaking part of the relevant public.
The existence of likelihood of confusion is not put into question by the other arguments put forward by the CTM proprietor.
With the argument that the parties had a business relationship in the past and that the cancellation applicant sold spare parts to the CTM proprietor, the CTM proprietor appears to rely on acquiescence or a peaceful co-existence.
Article 54(1) and (2) of Regulation No 207/2009 provides that, where the proprietor of a Community trade mark or an earlier national mark has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the European Union or in the Member State in which the earlier trade mark is protected while being aware of such use, he is no longer entitled to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark.
For acquiescence and a peaceful co-existence to be proven, the proprietor must show in the first place that the contested mark was used on the market place in the European Union. In the case at hand, the commercial relationship shown by the invoices dated 2008 does not refer to use of the contested mark but the respective company names (Pirelli Sociètta Pneumatici Pirelli and Ziarelli Mario Ric. Gomme SRL). Moreover, the relevant period for Article 54 CTMR to be applicable starts running once the contested Community trade mark has been registered, in this case on the 29 June 2011. Since the Community trade mark had not been registered for five successive years when the registration for cancellation was filed, Article 54 CTMR is not applicable. Already for these reasons, the CTM proprietor’s arguments fail.
The cancellation applicant’s claim, first raised before the Board of appeal, that the cancellation of the CTM registration would violate Article 2 of the Italian Constitution where the right to a name is declared to be a constitutional right is unfounded. Whilst it is true that the proprietor of a trade mark cannot prevent a third party from using his own name or address provided he uses them in accordance with honest practices in industrial or commercial matters (Article 6(1)(a) of the Harmonization Directive and Article 12(a) CTMR), this fact does not mean that a company is allowed to register a part of its corporate name as a Community trade mark notwithstanding the provisions of Article 8 CTMR and if, once it is registered, that this registration cannot be cancelled if there are prior rights as foreseen under Article 53 CTMR.
The essential issue in the present case is whether there exists a likelihood of confusion between the contested mark and the earlier marks on which the cancellation request is based. Any constitutional right in a name would apply to the names of both parties. At any rate, the Italian law is per se inapplicable for this appeal’s assessment of a likelihood of confusion in other Member States, see paragraph 15 above.
As the cancellation proceedings are successful in its entirety on the basis of earlier Community trade mark No 9 483 173 ‘PIRELLI’ and the grounds of Article 8(1)(b) CTMR, there is no need to examine the other earlier marks on which the cancellation request was based nor the reliance of the cancellation applicant upon Article 8(5) CTMR.
As the CTM proprietor (appellant) is the losing party in the appeal proceedings within the meaning of Article 85(1) CTMR, it must be ordered to bear the costs of cancellation applicant (respondent). The Cancellation Division correctly ordered that the CTM proprietor bears the costs of the invalidity proceedings.
In accordance with Article 85(6) CTMR and Rule 94(3), (6) and (7)(d) (iii) and (vi) CTMIR, the Board fixes the amount of representation costs to be paid by the appellant to the respondent with respect to the appeal proceedings at EUR 550 and for the invalidity proceedings at EUR 450. In addition the, CTM proprietor has to reimburse the invalidity fee of EUR 700 incurred by the respondent. The total amount is EUR 1 700.
On those grounds,
Dismisses the appeal;
Orders the appellant to bear the costs and fees of the appeal proceedings;
Fixes the amount of costs and fees to be paid by appellant to the respondent for the invalidity and appeal proceedings at EUR 1 700.
F. López de Rego
DECISION OF 4 december 2015 – R 1945/2014-4 – ZIARELLI / PIRELLI et al.