OPPOSITION No B 2 284 910
Automobili Lamborghini S.p.A., Via Modena, 12, 40019 Sant' Agata Bolognese (Bologne), Italy (opponent), represented by Klaus B. le Vrang, Audi AG/Bugatti International S.A., Patentabteilung, 85045 Ingolstadt, Germany (professional representative)
a g a i n s t
I.C.T. Truck & Trailer Parts NV, Noordkaai 21, 8870 Izegem, Belgium (applicant), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative).
On 30/08/2016, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the goods of European
Union trade mark application No
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 goods on which the opposition is based are the following:
Class 12: Motor vehicles and structural parts therefor, boats.
The contested goods are the following:
Class 12: Vehicles and parts of vehicles; Rearview mirrors; Reversing alarms for vehicles; Non-skid devices for vehicle tires; Axles for vehicles; Automotive parts; Luggage carriers for vehicles; Bumpers for automobiles; Vehicle bumpers; Bodies for vehicles; Horns for vehicles; Axle journals; Headlight wipers; Clutches for land vehicles; Trailer hitches for vehicles; Brake pads for automobiles; Cycle brakes; Brakes for vehicles; Brake discs for vehicles; Brake shoes for vehicles; Brake segments for vehicles; Brake linings for vehicles; Windscreen wipers; Shock absorbers for automobiles; Suspension shock absorbers for vehicles; Anti-skid chains; Mudguards; Caps for vehicle petrol [gas] tanks; Torsion bars for vehicles; Vehicle wheel hubs; Supporting feet for towed vehicles; Door and window frames for vehicle bodies; Chassis components; suspension components; Parts for towing vehicles; Parts for towed vehicles; Fifth wheel couplings; Parts for fifth wheel couplings; Brake pads for vehicles; Brake discs for vehicles; Brake drums for vehicles; Parts for trucks; Parts for towed vehicles; Parts for tractor vehicles; Pneumatic components for pneumatic brake systems; Pneumatic couplings for pneumatic brake systems; Brake regulators; Systems for preventing the theft of fuel from vehicles; Mup-flaps.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 12
The contested vehicles include, as a broader category the opponent’s motor 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.
The contested parts of vehicles; parts for trucks; parts for tractor vehicles; axles for vehicles; bodies for vehicles; door and window frames for vehicle bodies; chassis components overlap with the opponent’s structural parts for motor vehicles. Therefore, they are identical.
The contested rearview mirrors; reversing alarms for vehicles; non-skid devices for vehicle tires; automotive parts; luggage carriers for vehicles; bumpers for automobiles; vehicle bumpers; horns for vehicles; axle journals; headlight wipers; clutches for land vehicles; trailer hitches for vehicles; brake pads for automobiles; brakes for vehicles; brake discs for vehicles; brake shoes for vehicles; brake segments for vehicles; brake linings for vehicles; windscreen wipers; shock absorbers for automobiles; suspension shock absorbers for vehicles; anti-skid chains; mudguards; caps for vehicle petrol [gas] tanks; torsion bars for vehicles; vehicle wheel hubs; supporting feet for towed vehicles; suspension components; parts for towing vehicles; parts for towed vehicles; fifth wheel couplings; parts for fifth wheel couplings; brake pads for vehicles; brake discs for vehicles; brake drums for vehicles; parts for towed vehicles; pneumatic components for pneumatic brake systems; pneumatic couplings for pneumatic brake systems; brake regulators; systems for preventing the theft of fuel from vehicles; mup-flaps are all non structural parts and accessories for vehicles, which includes motor vehicles. These goods are considered to be similar to the opponent’s motor vehicles as they can share the same producer, end user and distribution channels. Furthermore, they are complementary.
The contested cycle brakes are dissimilar to the opponent’s motor vehicles and structural parts therefor, boats. These goods, whilst all pertaining to the broad category of vehicles, do not have the necessary links with respect to the reference criteria, namely, inter alia, their nature and purpose, 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. This is true even considering that motorcycles will fall under the opponent’s motor vehicles as even motorcycles and cycle brakes have insufficient links for a finding of similarity.
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 found to be identical or similar are directed at the public at large and/or vehicle manufacturers. The goods at issue are likely to command a higher than average degree of attention as they are either expensive and infrequent purchases (for example vehicles and axles for vehicles) or are infrequent and specialised goods (for example brakes, horns for vehicles). The degree of attention is considered to be higher than normal.
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 consisting of a black shield with a thick grey border inside of which appears the verbal element ‘LAMBORGHINI’ at the top and beneath this the white and grey realistic image of a bull with its head down moving from the centre towards the right.
The contested sign is also a figurative mark, but it consists of a white ellipse with a thin black border inside of which appears the black and white silhouette image of a bull with its head down moving from the right towards the left.
Neither sign has any element that has any meaning in relation to the goods in question, and therefore they do not have any element that could be considered clearly more distinctive than other elements.
Likewise, neither sign has any element which appears more dominant (visually eye-catching) than other elements.
Visually, the signs coincide as far as they both have images of bulls with their heads down, although they differ in the precise manner in which they are displayed (the direction of movement differs, one is realistically displayed, the other in silhouette). Furthermore, they differ in the verbal element of the earlier mark which has no counterpart in the contested sign and the different backgrounds (shield vs. ellipse).
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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, the signs are similar to a low degree.
Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.
Conceptually, the public in the relevant territory will perceive the concept of a bull in both signs. Therefore, the signs are conceptually similar to a high degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
The goods have been found to be partially identical, partially similar and partially dissimilar. The signs under comparison have a degree of similarity based on both having representations of a bull with its head down, making the signs visually similar to a low degree and conceptually highly similar. However, the bulls are not that similar as they differ in the manner of their presentation (the direction of movement differs, one is realistically displayed, the other in silhouette). Furthermore, the earlier mark uses a shield shape as the background while the contested sign uses an ellipse.
Finally, the earlier sign has a distinctive verbal element, ‘LAMBORGHINI’, which has no corresponding element in the contested sign and which is placed above the figurative one. As already explained above, signs which are composed of both word and figurative components, usually the word component of the sign has a stronger impact on the consumer than the figurative component. Bearing this in mind, the Opposition Division concludes that consumers will readily refer to the earlier mark by its distinctive verbal element.
Taking into consideration all the facts set out above, in particular the differences between the signs due to the distinctive verbal element ‘LAMBORGHINI’, as well as the fact that the opponent has not claimed or proved any enhanced distinctiveness for his earlier mark, and taking into account the goods at stake, the Opposition Division finds that the relevant public, which it must be remembered will have a higher than normal degree of attention, is not likely to believe that the earlier mark and the contested sign, even if applied to identical goods, originate from the same undertaking or economically-linked undertakings. As a result, there is no likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) EUTMR.
Therefore, the opposition must be rejected.
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
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.