OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 363 326
RUD Ketten Rieger & Dietz GmbH u. Co. KG, Friedensinsel, 73432, Aalen-Unterkochen, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)
a g a i n s t
Inter Cars S.A., Powsińska 64, 02-903 Warszawa, Poland (applicant), represented by Kancelaria Prawno-Patentowa Ryszard Skubisz, ul. Piastowska 31, 20-610 Lublin, Poland (professional representative).
Class 12: Vehicles and apparatus for locomotion by land.
trade mark application No
3. Each party bears its own costs.
The opponent filed an opposition against some of the goods of Community trade mark application No 12 474 102, namely against the goods in Classes 8 and 12. The opposition is based on German trade mark registration No 964 217 and international trade mark registration designating the Czech Republic, Austria, Romania, Latvia, Slovakia, Poland, Hungary, Finland, France and Sweden No 433 634. The opponent invoked Article 8(1)(b) CTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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 trade mark registration designating Sweden No 433 634.
The goods on which the opposition is based are the following:
Class 12: Anti-skid chains; safety chains for tires.
The contested goods are the following:
Class 8: Handtools and instruments; keys.
Class 12: Vehicles; apparatus for locomotion by land, air or water; luggage carriers for vehicles; ski carriers for use on vehicles; children’s safety seats for vehicles; seat covers for vehicles; canopies for car; windscreen wipers; cigar lighters for automobiles; organisers for car boots; bicycle racks for vehicles; ski racks for vehicles; roof racks.
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 8
The opponent’s goods are devices fitted to the tyres of vehicles to provide maximum traction when driving through snow and ice. These goods are dissimilar to handtools and instruments and keys, as the opponent’s goods are all accessories for vehicles. The contested goods and the opponent’s goods have, therefore, different natures and purposes and, contrary to the opponent’s argument, they are likely to be manufactured by different companies.
Contested goods in Class 12
The contested vehicles and apparatus for locomotion by land are similar to the opponent’s goods in the same class, as they can have the same producers, end users and distribution channels. Furthermore, they are complementary.
With regard to the remaining contested goods, namely apparatus for locomotion by air or water; luggage carriers for vehicles; ski carriers for use on vehicles; children’s safety seats for vehicles; seat covers for vehicles; canopies for car; windscreen wipers; cigar lighters for automobiles; organisers for car boots; bicycle racks for vehicles; ski racks for vehicles; roof racks, it is not common for these accessories also to be produced by manufacturers of the main products, such as the opponent’s goods in the same class. Consequently, the consumer would not expect the main products and their accessories to be produced by, or under the control of, the same entity, especially because, usually, they are not distributed through the same channels of trade. Moreover, these goods have no connection with any of the opponent’s other goods because they do not coincide in any relevant factor; they have different natures, purposes, methods of use and distribution channels, they are neither complementary nor in competition and, therefore, the public would not expect these goods to be produced by, or under the control of, the same manufacturer. These goods are dissimilar.
Earlier trade mark
The relevant territory is Sweden.
Visually, the signs are similar to the extent that they coincide in the letters ‘MAMM**T*’. However, they differ in the letter ‘U’ of the earlier mark and the letters ‘OO’ and ‘H’ of the contested sign. The signs also differ in the slight stylisation of the contested sign.
Aurally, the letter ‘H’ in the contested sign will be silent. Therefore, the pronunciation of the signs coincides in the first syllables, [ma], and their second syllables, [mut] versus [moot], have a similar intonation; to that extent, the signs are aurally similar. The pronunciation differs in the slightly differing sounds [oo] (in the contested sign) and [u] (in the earlier mark).
Conceptually, the majority of the relevant public will understand the contested sign, ‘mammooth’, as a misspelling of the English term ‘mammoth’ (a large extinct elephant) and the earlier mark, ‘Mammut’, as the Swedish word for ‘mammoth’; therefore, the signs are conceptually identical.
Taking into account the abovementioned coincidences, it is considered that the signs under comparison are similar.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The marks under comparison have no elements which could be considered clearly more distinctive than other elements.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
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.
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 similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high. As regards some of the goods, as such “vehicles”, taking into consideration their price, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige. See in this respect the GC judgment of 22/03/2011, T-486/07, ‘CA’, paras 27-38 and GC judgment of 21/03/2012, T-63/09 ‘SWIFT GTi’, paras 39-42.
Global assessment, other arguments and conclusion
The goods are partly similar and partly dissimilar.
The aural similarities between the signs are overwhelming. The marks have almost the same length (six letters in the earlier sign versus eight letters in the contested sign). They each consist of two syllables, one of which is identical (the first syllable). In addition, they have similar intonations and rhythms.
Visually, the marks coincide in the letters ‘MAMM’, which are positioned at the beginning of the signs. In this respect, and bearing in mind that it is the overall impression of the signs that has to be taken into account (judgment of 26/06/2008, T‑79/07, ‘Polaris’, paragraph 42), consumers generally pay greater attention to the beginning of a mark than to the end (judgment of 17/03/2004, T‑183/02 and T‑184/02, ‘Mundicor’, paragraph 81). Moreover, the signs are conceptually identical.
Furthermore, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. The fact that some of the goods are directed at specialist consumers having a higher than average degree of attention is not sufficient to exclude a likelihood of confusion. The fact remains that the strong similarities between the marks are clearly perceptible.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s international trade mark registration designating Sweden. As stated above in section b) 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.
It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark, namely vehicles and apparatus for locomotion by land.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods cannot be successful.
The opponent has also based its opposition on German trade mark registration No 964 217 for the word mark ‘MAMMUT’. Since this mark is identical to the one which has been compared and covers the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.