OPPOSITION No B 2 156 183

MAN Truck & Bus AG, Dachauer Str. 667, 80995 München, Germany (opponent), represented by Röhl - Dehm & Partner, Moritzplatz 6, 86150 Augsburg, Germany (professional representative)

a g a i n s t

Halla Holdings Corporation, 46, Giheungdanji-ro, Giheung-gu, Yongin-si, Gyeonggi-do, Republic of Korea (applicant), represented by Hirsch & Associés, 137 rue de l'Université, 75007 Paris, France (professional representative).

On 15/08/2016, the Opposition Division takes the following


1. Opposition No B 2 156 183 is rejected in its entirety.

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


The opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 276 301, namely against all the goods and services in Classes 7, 9, 11, 12, 35, and 37. The opposition is based on international registrations No 542 763 designating Spain, the Czech Republic, Austria, Bulgaria, Hungary, Germany and France and No 863 418 designating the European Union, both for the figurative mark , as well as No 542 762 designating Austria, Germany and France for the figurative mark , and German trade mark registrations No 641 584 for the word mark ‘Man’ and No 981 579 for the figurative mark Shape1 . The opponent invoked Article 8(1)(b) and Article 8(5) 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.

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 international registrations No 863 418 designating the European Union and No 542 762 designating Austria, Germany and France, as well as its German trade mark registration No 981 579.

  1. The goods and services

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

International trade mark registration No 863 418:

Class 35: Advertising of any kind using all available media such as TV, radio, Internet, press and means such as advertising films, posters, pictures, photos, calendars, clothing, publications, brochures, catalogues, datasheets, operator's and maintenance manuals, magazines, journals, handbooks, mobile and stationary advertisement carriers for products such as clothing articles, footwear, headwear of all types and for services which are rendered in conjunction with the trading, sales, marketing, servicing and using of the aforementioned products.

International trade mark registration No 542 762:

Class 7: Motors and engines for boats and for stationary applications, as well as parts thereof.

Class 12: Trucks, motor coaches and motor buses, road maintenance vehicles, as well as parts thereof; motor and engines for land vehicles.

Class 37: Repair and maintenance of motor vehicles and of engines and motors.

German trade mark registration No 981 579:

Class 7: Gas-, air- and water-conveyors, namely plunger pumps, eccentric rotor pumps, lobe pumps, vane pumps, rotary pumps, pressure lifts, rams, jet pumps and bellows; brake linings; shaped metal parts worked mechanically or by hand; cutlery; hand-operated or machine-operated industrial and agricultural tools, namely saws, saw blades, files (tools), drills, pliers, hammers, lathe tools, countersinking tools, milling tools, knives, scribers, rasps, spades and hoes; pneumatic tools, tools for electric and oxy-fuel welding and cutting; agricultural machines and apparatus for attaching to vehicles and apparatus for operating said goods; armatures; chains; vehicle frames and bridge roadways; armatures for machines; engines, namely steam engines, heat engines, dynamo machines, steam motors, gas motors, internal combustion engines, explosion engines, hot-air motors, pneumatic motors, wind motors, spring-force motors, water motors, electric motors, steam turbines, water turbines, fuel turbines, and jet engines arid rocket engines and parts therefor; drive apparatus and machines for bridges, dock gates and lock gates and parts therefor; work machines, namely pumps, compressors, bellows, current generators, generators, compressed-air, vacuum and ventilator gas generators and parts therefor; mechanical, hydraulic, pneumatic and electric presses and parts therefor; materials testing machines, apparatus and machines for materials testing with atomic radiation; refrigerators, printers, book-printing machines, rotogravure printers and offset printers, colour printers, stamping presses (stereotype), longitudinal and transverse cutting apparatus, paint mills, folding apparatus; bookbinding machines; escalators, elevators; pulling, bending and folding machines; lifting and conveying machines for solid, liquid and gaseous substances; winches, capstans, cranes, hydraulic, pneumatic and mechanical power lifts, excavators, suction dredgers, bellows, conveyor troughs, bucket conveyors, conveyor belts, trolleys, chutes, stackers, grinding machines, shredding machines, shaker grates, shaker machines, sieving and sorting machines; mobile and stationary machines for clearing and piling bulk goods; feeder machines, loading bridges, transfer tables, turntables, coal tippers, rams, stampers, shavings extractors and dust extractors, silos for granular and fibrous goods, gates for silos of this type; shaping and casting machines and flasks for casting, concrete finishing machines, pressing machines, brick-making machines; machine tools, namely lathes, drills, saws, planes, milling machines, cutting and centring machines and automated tools and parts therefor; presses, die-forging machines, welding apparatus, melting apparatus, superheaters, flow apparatus; machines for rolling sheet metal and plastics; struts, stamps, conveyor cages and setting clamps, and parts therefor, for mining; mills, drum mills, crushers, agitators; slipways and parts therefor; bearings, foundations, machine stands and frames, bearing brushes, grease boxes, burners and combustion chambers and parts therefor, filters and starters for motor vehicles and machines; parts of machines, namely joints; sound and vibration dampers; lubricating devices, accumulators; printers’ type, printing plates, casting machines for printing plates, melting furnaces for printing purposes, ink pumps, feeding machines and delivery machines; boilers, economisers and steam accumulators, waste-steam col lectors, exhaust-gas boilers, recuperative and regenerative heat exchangers, condensers, heaters, and parts therefor for steam and gas power plants and for combined heat and power plants; blast furnaces and parts therefor, namely furnace casings, run-oft devices, closures and distributors for charge, elevators and bellows; generators and parts therefor; hydraulic installations, namely pumps and accumulators and hydraulic controls, and parts therefor; docks; hydraulic works, namely locks, pumping stations, weirs and parts therefor and drive machines therefor; machines and apparatus for use in forestry; furniture, upholstery for incorporation in rail vehicles and ready-made metal cabins; printers’ type, printing blocks; vehicle fittings, namely canisters of plastic or metal, lubricating apparatus, lifting jacks, identification plates; electric and non-electric soldering and welding apparatus.

Class 9: Life-saving and fire-extinguishing apparatus and instruments; physical, chemical, electrotechnical, thermal and acoustic apparatus, surveying, nautical, weighing, signalling, measuring, calibration and checking (supervision) apparatus; antennas and lightning conductors; cables and masts for high-voltage lines; safety and warning apparatus.

Class 11: Apparatus for lighting, water-heating, heating, cooking, refrigerating, drying, humidifying, ventilating, extracting and dedusting purposes; mechanical apparatus for producing artificial ice, air-conditioning apparatus; fans; gas-, air- and water-supply installations; bath and toilet installations; absorption and adsorption apparatus; parts for the aforesaid goods; lamps, headlights; fittings and pipelines for liquid and gaseous fluids; chimneys; boilers; burners for gaseous and liquid fuels; heating bodies; insulators; lights, decorative lights; furnaces, incinerators, waste incinerators and industrial furnaces.

Class 12: Wheeled vehicles for rails and roads, having their own drive or driven remotely; lorries, motor buses, trolley buses, vans (vehicles), electrocars, rail traction vehicles driven by internal combustion engines, electric motors or steam engines; vehicle trailers for transporting goods and passengers and for rail and road vehicles; special-purpose rail and road vehicles; refuse collection vehicles, sweeping machines, dump cars, self-unloaders, tow trucks; rescue vehicles, ambulances, emergency service vehicles, fire engines and fittings therefor, namely pumps, ladders, parachutes, rescue chutes and stretchers; armoured and non-armoured military vehicles; combined rail and road vehicles or combined land and water vehicles; road rollers; tractors for agricultural and forestry purposes; trains, trolleys, trams, bogies, refrigerated lorries and tankers; moveable narrow-gauge railways, overhead railways, mountain railways, cog railways, elevated railways and parts thereof, and parts and vehicles for fixed narrow-gauge railways, overhead railways, mountain railways and cog railways; tracked vehicles, pontoons, floating docks, ferries, floating cranes, floating bridges; parts for vehicles, namely vehicle chassis, frames and superstructures, coach frames, axles, wheels, motors and engines, transmissions, brakes, couplings, windows, canopies, injection pumps, carburettors, tipping, loading and unloading apparatus, springs for vehicles, oil and fuel filters, exchange filter cartridges, suction and exhaust apparatus, exhaust turbochargers for internal combustion engines of vehicles, silencers, saddles, seats, windscreen wipers, steering wheels, shock absorbers, indicators, mudguards, bumper bars, starter motors, dashboards, measurement instruments, generators, headlights, ignition apparatus, vehicle fittings, propellers and radiators and radiator housings; sterns, timbers (frames), watertight compartments, keels, masts and hatchcovers for ships; apparatus for protecting corners and edges (bumpers, fenders) for stationary structures and vehicles; electric vehicle parts; goods of wood, namely containers and vessels, boards, rods, bars, casings, beadings, wedges and models; frames for vehicle seats; gearboxes and gear parts of celluloid or laminated or unlaminated plastics; vehicles.

The contested goods and services are the following:

Class 7: Car lifts, Kick starters for motorcycles, Bicycle assembling machines, Machine tools, Drilling machines{for metalworking}, Milling machines{for metalworking}, Hydraulic presses{for metalworking}, Forging moulds, Drilling machines, Machining centers, Drilling machines{except for woodworking}, Lathes{except for woodworking}, Lathes{for metalworking}, Air condensers, Superchargers, Condensers{steam}{parts of machines}, Control mechanisms for machines/engines or motors, Control cables for machines/engines or motors, Shock absorbers for machine other than for vehicles, Spiral springs other than for vehicles, Rail antishocking materials other than for vehicles, Spring buffers other than for vehicles, Spring hydaulic buffers other than for vehicles, Airsprings other than for vehicles, Lamellar springs other than for vehicles, Shock absorber plungers{parts of machines}, Dashpot plungers{parts of machines}, Braking devices for machine other than for vehicles, Disk brakes other than for vehicles, Band brakes{machine elements not for land vehicles}, Brake linings other than for vehicles, Brake shoes other than for vehicles, Brake segments other than for vehicles, Block brakes{machine elements not for land vehicles}, Conical brakes other than for vehicles, Brakes for industrial machines, Brake pads other than for vehicles, Pressure reducers{parts of machines}, Grease rings{parts of machines}, Grease boxes{parts of machines}, Rings other than for land vehicles{parts of machines}, Roller bearings, Bearings{parts of machines}, Ball-bearings, Brushes{parts of machines}, Springs{parts of machines}, Universal Joints[Cardan joints], Lubricators{parts of machines}, Vehicle washing installations, Automatic washing machines for vehicles, Automatic parking installations, Machines for parking management{except for electric applications}, Parking machines, Rubber processing machines, Rubber forming machines, Rubber manufacturing machines, Rubber mixing machines, Plastic processing machines, Plastic working machines, Plastic manufacturing machines, Stators{parts of machines}, Alternators, Alternating current servo motors, Starters for motors and engines, Starter alternators, Motors{except for land vehicles}, Current generators, Dynamo Brushes, Servomotors, Driving motors other than for vehicles, Servo motors other than for vehicles, Electric motors other than for vehicles, DC motors other than for vehicles, Driving motors other than for land vehicles, Motors other than for land vehicles, Motors{electric} other than for land vehicles, Planetary gear motors, Bicycle dynamos, Electric starter motors, Igniting magnetos, Electrostatic generators, Direct current motors, DC generators, Carbon brushes{electricity}.

Class 9: Optical apparatus and instruments, Optical Lenses, Optical goods, Multiple purpose cameras, Multiframe view cameras, Digital cameras, Camera containing a linear image sensor, Infrared cameras, Accelerometers, Acceleration sensors, Range finders, Speed Indicators, Speed checking apparatus for vehicles, Kilometer recorders for vehicles, Automatic indicators of low Pressure in vehicle tires[tyres], Pressure sensors, Automatic pressure control apparatus, Pressure measuring apparatus, Temperature sensors, Gyrometers, Bicycle speedometers, Alarms, Alarms, Attenuators, Voltage regulators for vehicles, Transformers{electricity}, Switches{electric}, Light Dimmers(regulators){electric}, Regulating apparatus{electric}, Adapters{electricity}, Inverters{electricity}, Control panels{electricity}, Armatures{electricity}, Resistances{electric}, Converters{electric}, Connections{electric}, Contacts{electric}, Electrical controllers, Electrical controlling devices, Coils{electric}, Current converters, Electric current switches, Electric current control devices, Current limiters, Voltage stabilizing power supply, Voltage stabilizers, Voltage regulators, Power switches, Electromagnetic Coils, Current rectifiers, Rectifier modules, Electric apparatus for Commutation, Commutators, Power transformers for amplification, Circuit breakers, Differential switches, Choking coils(impedance), Condensers[capacitors], Battery charge devices, Accumulators{electric}{for vehicles}, Battery cases, Accumulators{electric}, Wavemeters, Car video recorders, Detectors, Interfaces for detectors, High-frequency apparatus, Radar apparatus, Microwave antennae, Antennas for wireless communications apparatus, Direction finders, Navigation apparatus for vehicles(on-board computers), Aerials, Antennae filters, Remote control apparatus, Satellite navigational apparatus, Car navigators, Car aerials, Telecommunication machines and implements, Transmitters{telecommunication}, Transmitting sets{telecommunication}, Frequency converters, Radar receivers with amplifiers, Car antennae, Communications apparatus for vehicles, Telecommunications transmitters, Apparatus for transmission of communication, Navigational instruments, Portable communications apparatus, Ultrasonic sensors, Diodes, Semi-conductors, Semi-conductor memories, Semi-conductor memory units, Semiconductor elements, Semi-conductor wafers, Semiconductor power elements, Light emitting diodes[LED], Wafers(silicon slices), Printed circuit boards, Testing apparatus for testing printed circuit boards, Electronic circuit board, Connectors for electronic circuits, Integrated circuits, Circuit boards provided with integrated circuits, Integrated circuit module, Chips[integrated circuits], Transistors, Printed circuits, Circuit boards.

Class 11: Water purifiers for household purposes, Heating apparatus, Water heaters, Hot air apparatus, Refrigerating chambers, Refrigerating Containers, Air conditioners, Filters for air conditioning, Air conditioning installations, Air conditioning apparatus, Fans{air-conditioning}, Fans{parts of air conditioning installations}, Heating and cooling systems for motor cars, Air conditioners for automobiles, Ventilation[air-conditioning] installations and apparatus for automobiles, Heaters for automobiles, Bicycle lights, Bicycle lamps, Lighting apparatus and devices for bicycles, Air purifiers{for household purposes}, Air sterilizers, Air purifying apparatus and machines, Humidifiers, Electric refrigerators{for household purposes}, Water purifiers for household purposes{electric}, Dehumidifiers{for household purposes}, Electric refrigerators.

Class 12: Horns for motor cars, Anti-theft devices for motor cars, Wheel rims for motor cars, Cycles, Parts and accessories for cycles, Cycle rims, Wheels for motorcycles, Cycle spokes, Cycle stands, Cycle frames, Cycle handle bars, Cycle hubs, Two-wheeled motor vehicles, Air bags{safety devices for automobiles}, Steering wheels for automobiles, Reversing alarms for automobiles, Parts and accessories for automobiles, Electric cars, Tandem bicycles, Mopeds, Touring bicycles, Delivery bicycles, Bicycles, Bicycle rims, Wheels for bicycles/cycles, Bicycle spokes, Frames{for luggage carriers}{for bicycles}, Bicycle stands, Bicycle frames, Bicycle handle bars, Parts and accessories for bicycles, Handlebars, Shock absorbing springs for motor cars, Spiral springs for vehicles, Shock absorbing springs for vehicles, Spring-assisted hydraulic shock absorbers for vehicles, Air springs for vehicles, Suspension Shock absorbers for vehicles, Shock absorbing Springs for vehicles, Suspension shock absorbers for vehicles, Shock absorbers for automobiles, Brakes for motor cars, Brake linings for motor cars, Brake shoes for motor cars, Brake segments for motor cars, Disk brakes for vehicles, Band brakes for vehicles, Brakes for vehicles, Brake facings for vehicles, Brake linings for vehicles, Brake shoes for vehicles, Brake systems for vehicles, Braking systems for vehicles and parts thereof, Brake segments for vehicles, Brake Shoes for vehicles, Block brakes for vehicles, Conical brakes for vehicles, Non-skid devices for vehicle tires[tyres], Braking devices for vehicles, Cycle brakes, Band brakes{for land vehicles}, Block brakes{for land vehicles}, Brake pads for automobiles, Brakes for bicycles/cycles, Bicycle brakes, Gearboxes for motor cars, Crankcases for components for motor cars{other than for engines}, Clutch mechanisms for motor cars, Torque converters for motor cars, Gears for cycles, Reduction gears for land vehicles, Gears for land vehicles, Gear boxes for land vehicles, Transmission shafts for land vehicles, Gears for vehicles, Cranks for cycles, Bearings for land vehicles, Axis for land vehicles, Couplings for land vehicles, Axle journals, Trailer couplings, Electric motors for motor cars, Motors for cycles, Alternating current[AC] motors for land vehicles, Driving motors for land vehicles, Motors for land vehicles, Servomotors for land vehicles, Motors{electric}{for land vehicles}, Direct current[DC] motors for land vehicles.

Class 35: Import-export agencies, Administrative processing of purchase orders, Wholesale services for freezers, Retail services for hot-water heating apparatus, Wholesale services for automobiles, Commercial intermediary service in the field of bicycles, Retail services for tires[tyres] and tubes, Wholesale services for antifreeze, Retail service for liquid fuels, Commercial intermediary services in the field of parts of vehicles, Commercial intermediary services in the field of articles of vehicles, Commercial intermediary services in the field of renewal parts of vehicles, Trade agency, Trade consultancy, Trade brokerage, Offer services [trade].

Class 37: Air conditioning apparatus installation and repair, Heating equipment installation and repair, Freezing equipment installation and repair, Vehicle breakdown assistance [repair], Vehicle greasing, Motor vehicle maintenance and repair, Repair of bicycles, Repair of generators, Provision of coin-operated car washing machines, Rental of carwashing apparatus, Car wash, Vehicle polishing, Anti-rust treatment for vehicles, Vehicle wash, Vehicle cleaning, Automobile cleaning and car washing, Automobile decoration, Tuning of motor vehicles.

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

  1. 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 and services deemed to be identical are directed both at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is considered to vary from average to above, since some of the goods at issue, for instance motors for land vehicles in Class 12 or motor vehicle maintenance and repair in Class 37, are rather expensive and/or not purchased frequently.

  1. The signs

1) International registration No 863 418

2) International registration No 542 762

Picture 3

3) German trade mark registration No 981 579



Earlier trade marks

Contested sign

The relevant territories are the European Union with regard to earlier mark No 1), Austria, Germany and France with regard to earlier mark No 2) and Germany with regard to earlier mark No 3).

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).

Earlier marks No 1) and No 2) are figurative marks composed of the verbal element ‘MAN’ in bold capital letters in black, with an arc expanding above this verbal element in the case of earlier mark No 1). Earlier mark No 3) is a figurative mark composed of the verbal element ‘MAN’ in fairly standard capital letters, containing also the mark’s former and current registration/filing numbers in very small characters at the top and top right.

The verbal element ‘MAN’, belonging to basic English vocabulary, will be understood throughout the European Union as meaning an adult male human being (http://www.collinsdictionary.com/dictionary/english/man_1).

The contested sign is a figurative mark composed of the verbal element ‘MANDO’, represented in a slightly stylised way where the letters ‘N’ and ‘D’ overlap in one stroke.

The Spanish-speaking part of the public will perceive the verbal element of the contested sign as constituting the first person singular of ‘mandar’, meaning to command/to order/to send. For another part of the public, for example the English-, German- and French-speaking part of the public, that verbal element as a whole is a meaningless, fanciful term, in which the letters ‘MAN’ do not play an independent, distinctive role. Moreover, the rather short combination of the letters ‘MAN’ is naturally included in a lot of words. Therefore, there is no reason for the relevant public to dissect the word ‘MAN’ from the contested mark.

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

As regards earlier mark No 1), it is composed of a distinctive verbal element and a less distinctive figurative element, in the form of an arc, of a purely decorative nature.

Moreover, it has to be noted that, other than that, the stylisation of the earlier marks is limited to the representation of the verbal element ‘MAN’ in bold, capital, but otherwise standard letters. The stylisation of the verbal element is thus not particularly fanciful, and it is the verbal element ‘MAN’ that is the most distinctive element of the marks.

Owing to its size, the element ‘MAN’ is the dominant element of earlier mark No 3), as it is the most eye-catching. In fact, the additional numbers depicted at the top and top right of this element are almost illegible because of their small size and, therefore, are considered negligible. It follows that they will not be taken into account in the comparison of signs.

The rest of the marks do not have any elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘MAN’. Although they differ in the stylisation of these letters, and in the additional figurative element of mark 1) as well as the additional numbers of earlier mark No 3), as explained above, these elements do not play an important role in the marks’ overall impression.

However, the marks also differ in the letters ‘*DO’ of the contested sign. As explained above, it is because of these differing letters of the contested mark that the verbal element will be perceived as a meaningless, fanciful term, and that the letters ‘MAN’ will not be singled out from the sign by the relevant public.

Moreover, the signs differ in their length, since the earlier marks’ verbal element is very short and composed of three letters only, whereas in the contested sign, it is a five-letter word.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the phonemes ‛MAN’, present identically in all signs. The pronunciation differs in the phonemes ‛*DO’ of the contested mark, which have no counterpart in the earlier signs. The signs, therefore, also differ in their length, namely one syllable in the earlier marks versus two syllables in the contested sign.

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

Conceptually, while the public in the relevant territory will perceive the verbal element ‘MAN’ of the earlier signs as an adult male human being, the other sign lacks any meaning for a part of the relevant public.

The Spanish-speaking public will perceive the verbal element of the contested sign as meaning I command/I order/I send.

Since the signs will either be associated with a dissimilar meaning, or one of the signs will not be associated with any meaning, the signs are not conceptually similar.

  1. Distinctiveness of the earlier marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, earlier trade mark No 2) has a reputation in Germany and Austria in connection with the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition 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).

The opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists, in particular, of the following documents:

  • Extracts from the opponent’s websites and brochures from the opponent. Different models of trucks and buses are displayed, bearing the sign ‘MAN’ prominently and in chromed letters on the grill. Also machines, engines and parts are advertised.

  • Market study ‘Competing in the Global Truck Industry – Emerging Markets Spotlight’ by KPMG International, showing ‘leading players in key regions and markets in 2010 (GVW > 6 tons)’. MAN is shown in third position in West Europe, with a market share of 15.6%.

  • Semion brand evaluation 2009 to 2012, according to which MAN is ranking 23rd amongst other German trade marks (having gained one rank since 2009), with a brand value of more than EUR 1 600 million in 2008 and 2012.

  • Extracts from a study of the GfK Marktforschung of 2010, according to which 44% of Germans spontaneously mention MAN in connection with manufacturers of commercial vehicles and engineering. 82% of Germans are at last a little familiar with the trade mark when confronted with it. The parameters of the study are not divulged.

  • Study by the Reputation Institute Germany on ‘Germany’s Most Reputable Companies’ of May 2012, according to which MAN SE, represented by the earlier EU trade mark, ranks third in corporate reputation amongst DAX30 companies.

  • Press releases of 2008 and 2011, according to which MAN received the Econ Award for its brand and innovation campaign ‘We are your MAN’. Furthermore, it is stated that German football club FC Bayern Munich travels in a new MAN team coach, while competitor Borussia Dortmund has received a new MAN fan truck.

  • Company time-line which shows that the company name was created in 1908, when Vereinigte Maschinenfabrik Augsburg und Maschinenbaugesellschaft Nürnberg A.-G., Augsburg, was renamed Maschinenfabrik Augsburg-Nürnberg (M.A.N.). In 1915, the Lastwagenwerke M.A.N.-Surer (LWW) truck plant was founded, and the production of commercial vehicles began.

It is clear from the evidence that the sign ‘MAN’ has been subject to long‑standing and intensive use and is well known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures and market share shown by the evidence, and the various references in the press to the sign’s success, are all strong indications that the sign enjoys a high degree of recognition among the relevant public, at least for trucks and buses. Although the sales figures do not originate from independent sources, and the market surveys do not reveal the parameters they are based on, they coherently fit in the overall picture.

Although a lot of the evidence refers to the company name MAN rather than the earlier mark as such, it is apparent from the material that the opponent manufactures, inter alia, buses, trucks and their parts, and that its trade mark is used on the vehicles directly, although not in black but, as usually on vehicles, in chromed letters. The earlier trade mark is also used on brochures and in relation to the opponent’s web presence.

As regards goods in Classes 7 and 12, other than heavy vehicles, the evidence shows that they are offered by the opponent, but it does not show directly that the earlier mark enjoys reputation for those goods or how it is used on them. However, taking into account the nature of vehicles, which are composed of a range of parts and fittings such as engines and motors, it can be assumed that consumers would expect that their parts and fittings are manufactured by, or under the supervision of, the same or economically linked undertakings. Moreover, market reality shows that this is usually the case. Therefore, it can be reasonably assumed that the reputation the mark enjoys in relation to trucks and buses also extends to their parts and fittings.

Having examined the material listed above, the Opposition Division therefore concludes that earlier trade mark No 2) enjoys reputation and has acquired a high degree of distinctiveness with regard to those goods in Classes 7 and 12, at least in Germany, through its use on the market.

For reasons of procedural economy, the Opposition Division assumes that the earlier mark also enjoys reputation in relation to the remaining goods and services on which the opposition is based in Classes 7 and 37, and assumes reputation also for earlier trade mark No 2) designating Austria in relation to all the goods and services.

As regards earlier marks No 1) and 3), as well as earlier mark No 2) designating France, the opponent did not explicitly claim that they are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of earlier marks No 1) and 3), as well as earlier mark No 2) designating France, will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of earlier marks No 1) and 3) and earlier mark No 2) designating France must be seen as normal.

  1. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The Opposition Division has concluded in part d) of this decision that earlier mark No 2) enjoys reputation and has acquired an enhanced degree of distinctiveness in Germany in relation to the relevant goods in Class 12. The same is assumed for Austria and for the remaining goods and services the opposition is based on in Classes 7 and 37. The more distinctive the earlier trade mark, the greater will be the likelihood of confusion (judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 24). Therefore, marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29/09/1998, C‑39/97, ‘Canon’, paragraph 18).

In the present case, however, the enhanced distinctiveness of earlier mark No 2) cannot overcome the obvious differences between the signs, which will not go unnoticed by consumers, and outweigh their similarities to the extent that the verbal element ‘MAN’ does not play an independent, distinctive role and will not be singled out from the contested sign.

Considering all the above, there is no likelihood of confusion on the part of the public, even for identical goods and services.

As regards earlier marks No 1) and 3) and earlier mark No 2) designating France, the same findings apply in relation to the similarity of the marks at issue. Since those earlier marks have a normal degree of distinctiveness, the risk of confusion of consumers is even more unlikely.

Therefore, the opposition must be rejected insofar it is based on Article 8(1)(b) EUTMR.

The opponent has also based its opposition on the following earlier trade marks:

  • International registration No 542 763 designating Spain, the Czech Republic, Austria, Bulgaria, Hungary, Germany and France for the figurative mark

  • German trade mark registration No 641 584 for the word mark ‘Man’

Since these marks are either identical to the ones which have been compared or do not significantly differ from them, taking into account the above findings on the distinctive and dominant elements of the marks, and assuming that the conflicting goods and services are identical, and are registered in the same territory or parts thereof, respectively, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.


With regard to international registrations No 542 763 designating Austria and Germany for the figurative mark , and No 542 762 designating Austria and Germany for the figurative mark the opponent also invoked Article 8(5) EUTMR.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

  • The signs must be either identical or similar.

  • The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

  • Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

  1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR, international registration No 542 763 designating Austria and Germany being identical to international registration No 863 418 designating the EU. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

  1. Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Since earlier international registration No 542 763 designating Austria and Germany is almost identical to and covers goods and services earlier international registration No 542 762 designating Austria and Germany has been found or deemed to be reputed for, the findings on the similarity and reputation of the signs can be extrapolated to international registration No 542 763 designating Germany and Austria.

  1. The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

the degree of similarity between the signs;

the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

the strength of the earlier mark’s reputation;

the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, even assuming that the goods and services in question are identical, and despite the reputation of the earlier marks, it is highly unlikely that the relevant public will establish a link between the signs at issue, mainly for the same reasons for which consumers will not confuse the signs: their similarities are outweighed by the differences between them.

The earlier marks, their minimal figurative elements set aside, are short signs, composed of three letters, whereas the contested sign is a five-letter word, which will be perceived as a fanciful, meaningless term by the German-speaking public. The letters ‘MAN’, which are naturally included in a lot of words, do not play an independent, distinctive role and will not be singled out from it by the relevant public.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected also insofar it is based on this ground.


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



Oana-Alina STURZA

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.

Latest News

    May 28, 2021

    For the purpose of packaging of finished coils of cable and wire, Reelex Packaging Solutions, Inc. (“Reelex”) filed for the registration of its box designs under International Class 9 at the United States Patent and Trademark Office (“USPTO”).

    May 27, 2021

    Fleet Feet Inc, through franchises, company-owned retail stores, and online stores, sells running and fitness merchandise, and has 182 stores, including franchises, nationwide in the US.

  • UNO & UNA | DECISION 2661950
    May 22, 2021

    Marks And Spencer Plc, Waterside House, 35 North Wharf Road, London W2 1NW, United Kingdom, (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Grays Inn Road, London WC1X 8BT, United Kingdom (professional representative)