OPPOSITION No B 2 539 461
Kurt Hesse, Daimlerstr. 61, 90441 Nuremberg, Germany (opponent), represented by Pöhlmann Früchtl Oppermann, Attorneys at Law, Gewürzmühlstr. 11, 80538 Munich, Germany (professional representative)
a g a i n s t
Yandom Trade Ltd, Θεμιστοκλη Δερβη 12, 1οσ Οροφοσ, 1066 Λευκωσια, Cyprus (applicant), represented by Law Firm Thanos Masoulas & Partners, Sina 11, 106-80 Athens, Greece (professional representative).
On 23/07/2020, the Opposition Division takes the following
1. Opposition No B 2 539 461 is upheld for all the contested goods and services.
2. European Union trade mark application No 11 742 616 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 742 616 . The opposition is based on, inter alia, the earlier European Union trade mark registration No 11 755 337. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
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 11 755 337.
a) The goods and services
The goods on which the opposition is based are the following:
Class 16: Paper, cardboard and goods made from these materials, included in class 16; printed matter; stationery, adhesives for paper and stationery or for household purposes; cards included in class 16; document folder.
The contested goods and services are the following:
Class 16: Newspapers, periodicals, books, instructional and teaching material (except apparatus).
Class 41: Education; providing of training.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 16
The contested newspapers, periodicals, books are included in the broad category of the opponent’s printed matter. Therefore, they are identical.
The contested instructional and teaching material (except apparatus) overlap with the opponent’s printed matter, insofar as the latter can be instructional and teaching printed material. Therefore, these goods have to be considered as identical.
Contested services in Class 41
The contested education; providing of training are considered similar to the opponent’s printed matter in Class 16, which covers goods such as textbooks or instructional materials. These goods and services may be directed at the same public and distributed through the same channels. It is not uncommon for undertakings offering any kind of course to often distribute these products to pupils as materials to aid learning. Moreover, they are considered complementary since the latter are indispensable for educational services.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods and services found to be identical are directed at the public at large as well as business customers with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods and services, the frequency of purchase and their price.
c) The signs
Earlier trade mark
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 in red colour. It contains the letters ‘-arrera’ written in fairly standard and slightly italicised lower case script. These letters are preceded and underlined by a curved line which most likely will be perceived by the public as a fancy and stylised upper case letter ‘C’ of the verbal element ‘Carrera’. The comparison will proceed on this basis.
The contested sign is a figurative mark, including the word ‘CARIERRA’ in blue capital letters and red lines surrounding the verbal element.
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.
In the present case, in order to avoid multiple scenarios of the conceptual comparison of the signs depending on whether their verbal elements are understood or not, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the verbal elements ‘Carrera’ and ‘CARIERRA’ do not convey any meaning, such as, inter alia, the German-speaking part of the relevant public.
Taking into account that the elements ‘Carrera’ and ‘CARIERRA’ are meaningless for the public taken into consideration, they are distinctive to an average degree in relation to all the relevant goods and services. As to the figurative elements and features present in the signs, they have a decorative function and will not add to the distinctiveness of either of the verbal elements, respectively.
The marks have no element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs at issue are nearly the same length (seven and eight letters respectively). They coincide in the letters ‘CAR*ER*A’ and, moreover, both include a double ‘R’, although in different positions. The signs differ in the additional letter ‘I’ of the contested sign, and the figurative features or elements which have a limited impact on the comparison.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the fact that the verbal elements ‘CARRERA’ and ‘CARIERRA’ are highly similar is particularly relevant in the present case.
Furthermore, the fact that the marks differ in the letter ‘I’ and an inversed position of the double ‘R’, has a relative visual impact, considering that these differences lie in the middle part of the mark, whereas the beginning (‘CAR-’) and the ending (‘-RA’) are the same.
Therefore, the signs are considered to be visually similar at least to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CAR*ER*A’. Considering that the pronunciation of double consonants in German is not striking, a different position of the double ‘R’ (‘CARRERA’ and ‘CARIERRA’) does not have a significant impact, if any, from the aural perspective. The difference between the signs is essentially limited to the additional sound ‘I’ in the contested sign.
Therefore, the signs are aurally similar to a high degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
e) Global assessment, other arguments and conclusion
The contested goods and services have been found partially identical and partially similar to the opponent’s goods. They are directed at the public at large and professionals whose degree of attention may vary from average to higher than average.
The signs are visually similar to at least an average degree and aurally highly similar, while the conceptual comparison remains neutral. Both signs contain one verbal element of a nearly identical length, the same beginning and end. Perceivable differences between the signs mainly lie in their visual representation, whereas the additional letter and sound ‘I’ placed in the middle of the contested sign as well as the different position of the double ‘R’ may easily be overlooked by the public.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).
As regards the visual differences resulting from the stylisation of the letters, the colours and the figurative elements, these will not be of any particular influence, since it is the natural tendency of consumers to identify marks by their verbal constituents rather than by describing their figurative elements. Therefore, the similarity found between the verbal elements ‘Carrera’ of the earlier mark and ‘CARIERRA’ of the contested sign is decisive.
Considering all the above, the Opposition Division concludes that the identity and similarity of the goods and services taken together with the visual and aural similarity of the signs, and in the absence of elements that may conceptually distinguish the marks, leads to a likelihood of confusion on the part of the German-speaking 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 755 337. It follows that the contested trade mark must be rejected for all the contested goods and services.
As the above mentioned earlier mark leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Cristina CRESPO MOLTÓ
Christophe DU JARDIN
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.