OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 384 256
Gemballa GmbH, Mollenbachstr. 17, 71229 Leonberg, Germany (opponent), represented by Unit4 IP Rechtsanwälte, Jägerstraße 40, 70174 Stuttgart, Germany (professional representative)
a g a i n s t
Makas Katarzyna Ruszkowska, Pl. Św. Katarzyny 9/5, 87-100 Toruń, Poland (applicant), represented by Kulikowska & Kulikowski SP.J., ul. Nowogrodzka 47A, 00-695 Warsaw, Poland (professional representative).
Class 12: Automotive vehicles; steering wheels for motor vehicles.
Class 35: Wholesaling and retailing of cars and spare parts for the aforesaid vehicles.
trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against all the goods and services of
Community trade mark application No
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 goods and services
The goods on which the opposition is based are the following:
Class 12: Motor cars and parts thereof, in particular tuned passenger vehicles and their parts; fittings for all the aforesaid goods, included in class 12.
The contested goods and services are the following:
Class 12: Automotive vehicles; steering wheels for motor vehicles.
Class 35: Wholesaling and retailing of motorcycles, mopeds, scooters, cars and spare parts for the aforesaid vehicles; product and service promotion, demonstration of goods and presentation of services; business assistance and sales brokerage of motorcycles, mopeds, scooters, cars and spare parts for the aforesaid vehicles.
Class 37: Servicing and repair of scooters, mopeds and motorcycles.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).
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 automotive vehicles include, as a broader category, the opponent’s motor cars. 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 steering wheels for motor vehicles overlap with the opponent’s parts of motor cars, since both can include the category of steering wheels for motor cars. Therefore, they are identical.
Contested services in Class 35
Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/10/2011, T-421/10, Rosalia de Castro, EU:T:2011:565, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.
Therefore, the contested retailing of cars and spare parts for the aforesaid vehicles are similar to a low degree to the opponent’s motor cars and parts thereof.
The principle set out above applies to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as wholesales services. Therefore, the contested wholesaling of cars and spare parts for the aforesaid vehicles are similar to a low degree to the opponent’s motor cars and parts thereof.
Similarity between wholesale and retail services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed goods and the specific goods covered by the other mark are identical. This condition is not fulfilled, as regards the contested wholesaling and retailing of motorcycles, mopeds, scooters and spare parts for the aforesaid vehicles. Therefore, the contested wholesaling and retailing of motorcycles, mopeds, scooters and spare parts for the aforesaid vehicles are dissimilar not only to the opponent’s motor cars and parts thereof but also to the remaining earlier goods, namely fittings for all the aforesaid goods, included in class 12. Indeed, they are different in nature, given that services are intangible whereas goods are tangible, also they serve different needs. Wholesale and retail services consist in offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the goods. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary.
The contested product and service promotion, demonstration of goods and presentation of services are advertising services. They consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc. The nature and purpose of these contested services are fundamentally different from the manufacture of goods or the provision of many other services. The mere fact that some goods or services may appear in advertisements is insufficient for finding a similarity. Therefore, product and service promotion, demonstration of goods and presentation of services are dissimilar to goods being advertised, thus also to the opponent’s ones in Class 12.
Business assistance services are usually rendered by companies specialised in this specific field such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services involve activities such as business research and appraisals, cost price analysis and organisation consultancy. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as how to efficiently allocate financial and human resources, how to improve productivity, how to increase market share, how to deal with competitors, how to reduce tax bills, how to develop new products, how to communicate with the public, how to do marketing, how to research consumer trends, how to launch new products, how to create a corporate identity, etc.
Therefore, the contested business assistance of motorcycles, mopeds, scooters, cars and spare parts for the aforesaid vehicles are dissimilar to the opponent’s motor cars and parts thereof.
The principle set out above applies to the sales brokerage services, since they are also usually rendered by companies specialised in this specific field such as business consultants. They consist of providing assistance in arranging transactions between the buyer and the seller part for a commission when the deal is executed.
Therefore, the contested sales brokerage of motorcycles, mopeds, scooters, cars and spare parts for the aforesaid vehicles are dissimilar to the opponent’s motor cars and parts thereof.
Contested services in Class 37
In general, services and goods are different in nature, since services are intangible whereas goods are tangible. In addition, in the present case, the contested servicing and repair of scooters, mopeds and motorcycles are provided for a different category of goods than the opponent’s goods which are neither scooters, nor mopeds or motorcycles. Moreover, they have a different purpose and method of use and they are not offered by the same companies through the same distribution channels. Finally, they are neither complementary nor in competition. Therefore, they are dissimilar.
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 or similar to a low degree are directed at the public at large. The degree of attention may vary from average to high, in case of more expensive goods such as automotive vehicles.
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 bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark, consisting of the verbal element ‘TORNADO’.
The contested sign is a figurative mark, composed of a black square background with, in the middle, a red device with a silver grey outline which contains the word ‘TORNEDO’ written in slightly stylised silver grey uppercase and, below, a large silver grey element which despite its T-shape will rather be perceived as a figurative element reminiscent of a coat of arms
Neither the earlier mark nor the contested sign have any elements that could be considered clearly more distinctive or dominant than other elements.
Visually, the signs coincide in the letters ‘T-O-R-N-*-D-O’. However, they differ in their fifth letter, which is ‘A’ in the earlier mark and ‘E’ in the contested sign. Moreover, the signs differ in the latter’s graphic and figurative elements described above which have no counterparts in the earlier mark. In this respect, it should be borne in mind that, 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).
In addition, the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters /T-O-R-N-*-D-O/, present identically in both signs. The pronunciation differs in the sound of the letter /A/ of the earlier sign which has as counterpart in the contested mark the letter /E/ of the contested sign. As mentioned above, the additional element in the contested sign will rather be perceived as a figurative element despite its T-shape and therefore, it will not be pronounced.
In view of the foregoing, the signs are aurally identical in their length and they are highly similar.
Conceptually, a significant part of the public in the relevant territory, for example, the English-, Italian- and Spanish-speaking part, will understand the earlier mark in its meaning of ‘violent storm’. In the contested mark, it cannot be excluded that part of the public will perceive the verbal element of the contested sign, ‘TORNEDO’, as a misspelling of the word ‘TORNADO’ and, therefore, evoke the same concept as in the earlier mark. For this part of the public, taking into account that the signs only differ in the remaining concept conveyed by the coat of arms in the contested sign, they are conceptually highly similar.
For the part of the public which understands the earlier mark and does not associate ‘TORNEDO’ in the contested sign with any meaning, while it perceives the concept conveyed by the coat of arms, the signs are conceptually dissimilar.
For the part of the public, such as the Greek-speaking public, that does not understand the earlier mark and does not associate the word ‘TORNEDO’ in the contested sign with any meaning, only the contested sign has a meaning in the concept conveyed by the coat of arms. For this part of the public, since one of the signs has no meaning, the signs are not conceptually similar.
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
Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (20/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17 et seq.).
Although the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
The contested goods and services are partly identical, partly similar to a low degree and partly dissimilar to the opponent’s goods.
The signs are aurally highly similar, visually similar to an average degree, due to the presence of the verbal elements ‘TORNADO/TORNEDO’, while they are conceptually highly similar for the majority of the public, dissimilar for another part and not conceptually similar for another part. However, taking into account that the verbal element of the contested sign has a greater impact on consumers than the figurative elements, in the present case, in the overall impression caused by the signs, the differences are outweighed, by the fact that the earlier sign and the word element ‘TORNEDO’ of the contested sign have six letters in common out of a total seven leading the earlier mark to be almost entirely included in the contested sign.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the relevant public and therefore the opposition is partly well-founded on the basis of the opponent’s Community trade mark registration.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark. Likewise, and taking into account the abovementioned principle of interdependence, whereby a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks, and vice versa, the Opposition Division considers in view of the above, that the contested trade mark must also be rejected for those services found to be similar to a low degree to the goods of the earlier trade mark.
The remaining contested services 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 services cannot be successful.
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 and services, 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.