OPPOSITION No B 1 893 257

Bugatti International S.A., 412F route d’Esch, L-1030, Luxembourg (opponent), represented by Volkswagen Aktiengesellschaft Martin Müller-Korf, Brieffach 011/1770, D-38436 Wolfsburg, Germany, (employee representative)

a g a i n s t

E.B. Equipment Ltd, Barugh Green Road, Redbrook, near Barnsley S75 1HR, United Kingdom (applicant), represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax HX1 2HY, United Kingdom (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 893 257 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 9 913 807, namely against all the goods in Class 12. The opposition is based on European Union trade mark registration No 852 954. The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) 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.

1. The goods

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

Class 12: Vehicles; apparatus for locomotion by land, air or water.

The contested goods are the following:

Class 12: Vehicles; apparatus for locomotion by land; vehicle body parts and transmissions; parts and fittings for all the aforesaid goods.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

2. 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 mid 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 mainly directed at the public at large and at business customers with specific professional knowledge or expertise in the field of automotion or mechanics. The degree of attention is considered high because of the price of the goods and the impact the goods have on the safety of the consumer.

3. 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 earlier mark is a figurative mark. There are various ways of interpreting the mark. Some may see a backwards, upper case letter ‘E’ coalescing, back to back, with an upper case letter ‘B’. Others may see a stylised number ‘3’, which coalesces with an upper case letter ‘B’. Others may see a purely figurative design featuring curvilinear loops to the right and rectilinear truncated lines to the left.

The contested sign is a figurative mark consisting of the letters ‘EB’ in a highly stylised red font, underneath which is the verbal element ‘motorsport’ in black.

The element ‘motorsport’ of the contested sign will be understood as ‘a sport involving the racing of motor vehicles, especially cars and motorcycles’ (information extracted from Oxford Dictionaries on 06/06/2016 at http://www.oxforddictionaries.com/definition/american_english/motorsport). Bearing in mind that the relevant goods are vehicles and their parts and fittings, this element is non-distinctive for these goods.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

The element ‘EB’ in the contested sign is the dominant element, as it is the most eye-catching item due to its size and position (in the centre).

Visually, for the public that will perceive the right-hand element in the earlier mark as the letter ‘B’, the signs may be considered to coincide in the letter, ‘B’. However, the way in which this letter is depicted within the signs is entirely different. The marks also differ in the additional word ‘motorsport’ and the colours of the contested sign. Therefore, as the graphic depiction of the earlier mark is very different to that of the contested mark, the mere fact that one letter of the marks could possibly be considered the same is not enough to render the marks visually similar.

The opponent argued that the earlier mark consists of the letters ‘E’ and ‘B’. However, the mere fact that the opponent named the earlier mark ‘EB’ when it filed the application for its European Union trade mark registration does not automatically mean that the relevant public will perceive this verbal element clearly and definitively in the same way (24/01/2012, T‑593/10, EU:T:2012:25, ‘B’, § 28). Moreover, even if the letter ‘E’ was the inspiration for the element of the earlier mark, it appears in the mark in such a distorted fashion that the relevant consumer, who is regarded as reasonably observant and circumspect, will not perceive it as such without making a considerable mental effort.

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 may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

The marks are not considered visually similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the contested mark will be pronounced as ‘EB’, partly with the word element ‘motorsport’. It is not clear how the earlier mark will be pronounced. There is no aural similarity if the earlier mark is pronounced as ‘3B’ or ‘B’, as in short signs differences have a greater impact than they do in longer signs.

The marks are not considered aurally similar.

Conceptually, the earlier mark and the contested mark, which has no elements other than the letter combination ‘EB’, do not have a meaning in any of the relevant languages, and thus the conceptual comparison remains neutral. For the part of the relevant public that would understand the meaning of the additional element (‘motorsport’) added to the letter combination ‘EB’ in the contested sign, the marks are not similar from a conceptual point of view.

The marks are not considered conceptually similar.

d) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

Moreover, under Article 8(5) EUTMR, it is a requirement that the earlier trade mark must be identical or similar to the trade mark applied for. As this has not been found in the present case, the opposition must be rejected on this ground also.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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

Richard THEWLIS

Liina PUU

Julie GOUTARD

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.