OPPOSITION No B 2 432 527

El Corte Ingles, S.A., Hermosilla, 112, 28009, Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 — 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Leasys S.p.A., Corso Giovanni Agnelli n. 200, 10135 Torino, Italy (applicant), represented by Barzanò & Zanardo Milano S.P.A., C.So Vittorio Emanuelle II 61, 10128 Torino, Italy (professional representative).

On 19/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 432 527 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 087 713 . The opposition is based on European Union trade mark registration No 11 823 051 . 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.

a) The goods and services

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

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 35: Advertising; business management; business administration; office functions.

Class 38: Telecommunications.

Class 39: Storage and distribution of goods of all kinds.

The contested goods and services are the following:

Class 9: Vehicle batteries; vehicles (navigation apparatus for -) [on-board computers]; car radios; milage recorders for vehicles; speed checking apparatus for vehicles; steering apparatus, automatic, for vehicles; voltage regulators for vehicles; simulators for the steering and control of vehicles; thermostats for vehicles; vehicle breakdown warning triangles; remote controls for operating vehicle alarms.

Class 12: Vehicles of all kinds, including new and second-hand vehicles; automotive vehicles; vehicle body hardware; windscreen wipers; ski carriers; seat covers; absorbers; wheel trims; hub caps; fenders; security harness for vehicle seats; tyres; doors for vehicles; seats; motors, engines and tanks for motor vehicles; anti-theft alarms for vehicles.

Class 25: Clothing for men, women and children, namely trousers, shorts, shirts, blouses, skirts, sports jerseys, sports shirts, polo shirts, T-shirts, sweatshirts, cardigans, sweaters, jumpers (pullovers), jackets (clothing), sports jackets, windcheaters, heavy coats, vests, stockings, socks; technical clothing for sport, skiing and tennis; swimming costumes; hats and caps; waist belts; boots, footwear, slippers and heavy-duty boots; ski boots.

Class 35: Business management in the field of financing, selling and rental of vehicles of all kinds; management of vehicle fleets, transportation means of all kinds and other capital goods, including being organisational, financial and technical, in particular controlling and organising the exploitation of vehicle fleets; internet marketing services; selling and e-commerce, via telecommunications networks, of a variety of goods related to the automobile sector, in particular selling of motor vehicles, parts and fittings therefor and sportswear; promotional activities and providing of information regarding all of the aforesaid goods and services, including via a digital platform.

Class 36: Insurance, financial affairs and leasing carried out in relation to the sale and rental of vehicles of all kinds; investment trusts; brokerage of securities and assets; secured loans to finance the contract hire of cars and vehicles.

Class 38: Mobile telephone, telephone, fax, paging, telex, telegram and radio communication services, electronic mail services, email data services; operating an internet search engine; providing of access to the internet and other electronic networks, computer databases, other electronic databases, central servers and hardware and software products; providing e-commerce platforms on the internet; rental of information technology and communications engineering apparatus, communications networks; transmission of information, messages and data of all kinds, including texts, images, data, music and films using the internet and other electronic networks; broadcasting of oral or visual programmes via the internet; transmission of information via a global data communications network.

Class 41: Arranging and conducting of courses and workshops (training).

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 terms ‘in particular’ and ‘including’, used in the applicant’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 9

The contested vehicle batteries; vehicles (navigation apparatus for -) [on-board computers]; car radios; milage recorders for vehicles; speed checking apparatus for vehicles; steering apparatus, automatic, for vehicles; voltage regulators for vehicles; simulators for the steering and control of vehicles; thermostats for vehicles; vehicle breakdown warning triangles; remote controls for operating vehicle alarms are dissimilar to all of the opponent’s goods and services because they have nothing in common. The contested goods and the opponent’s goods and services have different natures, purposes and methods of use. They do not have the same producer/service provider, target different end users and are not distributed through the same channels. Furthermore, they are not complementary or in competition.

Contested goods in Class 12

The contested vehicles of all kinds, including new and second-hand vehicles; automotive vehicles; vehicle body hardware; windscreen wipers; ski carriers; seat covers; absorbers; wheel trims; hub caps; fenders; security harness for vehicle seats; tyres; doors for vehicles; seats; motors, engines and tanks for motor vehicles; anti-theft alarms for vehicles have nothing in common with any of the opponent’s goods and services. They have different natures and purposes, are manufactured/provided by different companies and target different relevant publics. In addition, they are not distributed through the same channels and they have different methods of use. Furthermore, they are not complementary or in competition. Therefore, they are dissimilar.

Contested goods in Class 25

The contested clothing for men, women and children, namely trousers, shorts, shirts, blouses, skirts, sports jerseys, sports shirts, polo shirts, T-shirts, sweatshirts, cardigans, sweaters, jumpers (pullovers), jackets (clothing), sports jackets, windcheaters, heavy coats, vests, stockings, socks; technical clothing for sport, skiing and tennis; swimming costumes; hats and caps; waist belts; boots, footwear, slippers and heavy-duty boots; ski boots have nothing in common with any of the opponent’s goods and services. They have different natures and purposes, do not have the same producer/service provider and target different relevant publics. In addition, they are not distributed through the same channels and they have different methods of use. Furthermore, they are not complementary or in competition. Therefore, they are dissimilar.

Contested services in Class 35

The contested internet marketing services overlap with the opponent’s advertising. Therefore, they are identical.

The contested promotional activities and providing of information regarding all of the aforesaid goods and services, including via a digital platform are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested business management in the field of financing, selling and rental of vehicles of all kinds includes, as a broader category, the opponent’s business management. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested management of vehicle fleets, transportation means of all kinds and other capital goods, including being organisational, financial and technical, in particular controlling and organising the exploitation of vehicle fleets is included in the broad category of the opponent’s business management. Therefore, they are identical.

The contested selling and e-commerce, via telecommunications networks, of a variety of goods related to the automobile sector, in particular selling of motor vehicles, parts and fittings therefor and sportswear are dissimilar to all of the opponent’s goods and services because they have nothing in common. They have different natures and purposes. They do not have the same distribution channels, do not target the same end users and are provided by different companies. In addition, they have different methods of use. Furthermore, they are not complementary or in competition.

Contested services in Class 36

The contested insurance, financial affairs and leasing carried out in relation to the sale and rental of vehicles of all kinds; investment trusts; brokerage of securities and assets; secured loans to finance the contract hire of cars and vehicles are dissimilar to all of the opponent’s goods and services because they have nothing in common. They have different natures and purposes. They do not have the same distribution channels, they do not target the same end users and they are provided by different companies. In addition, they do not have the same method of use. Furthermore, they are not complementary or in competition.

Contested services in Class 38

The contested mobile telephone, telephone, fax, paging, telex, telegram and radio communication services, electronic mail services, email data services; operating an Internet search engine; providing of access to the internet and other electronic networks, computer databases, other electronic databases, central servers and hardware and software products; providing e-commerce platforms on the Internet; rental of information technology and communications engineering apparatus, communications networks; transmission of information, messages and data of all kinds, including texts, images, data, music and films using the Internet and other electronic networks; broadcasting of oral or visual programmes via the Internet; transmission of information via a global data communications network are included in the broad category of the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 41

The contested arranging and conducting of courses and workshops (training) and the opponent’s instructional and teaching material (except apparatus) have the same purpose. They can have the same provider/producer, target the same relevant public and be distributed through the same channels. Furthermore, they are complementary. Therefore, they are similar.

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 services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

Earlier trade mark	Contested sign

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 trade mark containing the verbal elements ‘CLICK’ and ‘CAR’. The element ‘&’ in the earlier mark will be recognised as an ampersand, which will be understood by the relevant public as ‘and’. The verbal elements are depicted in a rather standard typeface; the element ‘Click’ is in black, the element ‘car’ is in grey and the ampersand is in white. The verbal elements are placed against a grey rectangular background, which is of a decorative nature and thus is less significant than the other elements of the mark and does not indicate commercial origin.

The earlier mark will be perceived by the relevant public as containing two words, ‘Click’ and ‘Car’, joined by an ampersand. The word ‘click’ is a common English word that refers to the pressing of a button on a computer mouse or keyboard. It will be understood by the vast majority of the relevant public. Bearing in mind the relevant goods and services, the word ‘click’ implies that these goods and services can be ordered online and therefore it has a limited degree of distinctiveness. The word ‘car’ refers to a road vehicle powered by a motor. It is a common English word that is widely used throughout the European Union and therefore it will be understood by the relevant public. For some of the goods and services, such as business management and instructional and teaching material, the word ‘car’ may allude to the goods and services, namely being car fleet management or instructional and teaching material for driving schools. Therefore, for some of the goods and services, the degree of distinctiveness of this element is low. For other services, such as telecommunications, the word ‘car’ is not descriptive, allusive or otherwise weak and so its degree of distinctiveness is average.

The contested sign is a figurative mark containing the verbal element ‘clickar’ and below it, in much smaller grey upper case letters, the verbal elements ‘DRIVE IT AGAIN’. The verbal element ‘clickar’ is depicted in rather standard lower case letters; the letters ‘cli*k’ are in blue and the letters ‘*c*ar’ are in red.

Generally, consumers perceive a mark as a whole and do not proceed to analyse its various details. However, they may break a mark down if it contains elements that would encourage such a split (e.g. a special character, a hyphen or another punctuation mark), when one of the elements has a clear meaning or when all of the elements suggest a concrete meaning. In the present case, the use of different colours in the verbal element ‘clickar’ does not reflect clearly the words into which it could be broken down; moreover, because it is depicted in two colours, the sequence of letters ‘click’ in the contested sign will not be perceived by consumers as the word ‘click’, especially taking into account that the remaining letters, ‘*ar’, do not suggest any meaning. Therefore, the relevant public will perceive the verbal element ‘clickar’ in the contested sign as one word, which as such has no meaning for the relevant public and so has an average degree of distinctiveness. However, it cannot be excluded that part of the relevant public will associate it with or perceive it as a misspelling of the word ‘clicker’, which means a person or thing that clicks (information extracted from Collins Dictionary on 20/11/2018 at https://www.collinsdictionary.com/dictionary/english/clicker). Even if part of the relevant public would make such an association, the element ‘clicker’ is not descriptive, allusive or otherwise weak in relation to the relevant goods and services and so the degree of distinctiveness of the element ‘clickar’ is still average.

The expression ‘DRIVE IT AGAIN’ is composed of English words. The word ‘drive’ means to ‘operate and control the direction and speed of a motor vehicle’ (information extracted from Oxford Dictionaries on 29/11/2018 at https://en.oxforddictionaries.com/definition/us/drive). The word ‘again’ means ‘another time, once more’. The word ‘it’ is, inter alia, a pronoun used to refer to a thing previously mentioned or easily identified (information extracted from Oxford Dictionaries on 29/11/2018 at https://en.oxforddictionaries.com/definition/us/it). These words will be understood by the part of the relevant public that understands English. Part of the public that understands English may perceive this expression as a whole, in relation to some of the services (e.g. management of vehicle fleets, transportation means of all kinds and other capital goods, including being organisational, financial and technical, in particular controlling and organising the exploitation of vehicle fleets), as a promotional slogan and so it is non-distinctive for this part of the public. For the remaining services, this verbal element is not descriptive, allusive or otherwise weak and so has a normal degree of distinctiveness. It also has a normal degree of distinctiveness for all of the services for the part of the public that does not understand English.

Taking into account that the expression ‘DRIVE IT AGAIN’ is depicted below the verbal element ‘clickar’, spread over half the length of it and depicted in much smaller letters than the latter and in light-grey letters, which makes it even less likely that it will be noticed in comparison with the element ‘clickar’, which is in red and blue and therefore it is considered that the verbal element ‘clickar’ is the dominant (most visually eye-catching) element in the contested sign.

Visually, the signs coincide in the letters ‘click’; however, they differ in the combination ‘*&car’ in the earlier mark and in the letters ‘*ar’ in the contested sign, as well as in the expression ‘DRIVE IT AGAIN’ in the contested sign, which has no counterpart in the earlier mark. The signs also differ in their colours.

Although both signs contain the sequence of letters ‘click’ at the beginning of their verbal elements, this commonality is not easy to spot at first sight because, in the earlier mark, the letters ‘click’ form an independent and clearly recognisable verbal element, whereas, in the contested sign, the second letter ‘c’ and the letters ‘cli*k’ are in different colours and are incorporated in a single verbal element, which makes it difficult to immediately recognise the sequence of letters ‘click’ in this sign. Furthermore, the earlier mark contains other clearly distinguishable elements, such as the ampersand and the word ‘car’, and the contested sign contains the additional verbal elements ‘DRIVE IT AGAIN’. Therefore, the signs are visually similar to only a low degree.

Aurally, the ampersand, ‘&’, in the earlier mark will be pronounced in most European Union languages and is recognised as the conjunction ‘and’ (in the corresponding translations). Therefore, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced in three syllables, as ‘click’, ‘and’ (or its equivalent) and ‘car’. The dominant (most visually eye-catching) element of the contested sign will be pronounced in two syllables, namely as ‘cli-ker’, ‘cli-kar’ or ‘clic-kar’. Furthermore, the expression ‘DRIVE IT AGAIN’, if pronounced by the relevant public, will be pronounced as an additional four syllables in the contested sign, namely as ‘draiv-it-a-gain’, none of which has a counterpart in the earlier mark. However, even if the expression ‘DRIVE IT AGAIN’ is not pronounced, when referred to verbally, the sound of the earlier mark is clearly longer than that of the contested sign. Furthermore, the sound corresponding to the ampersand is quite audible when the earlier mark is pronounced. Moreover, the element ‘clickar’ of the contested sign will be pronounced as one word made up of two syllables, whereas the earlier mark will be pronounced as two words connected by an ampersand; therefore, the signs are aurally similar to a low degree at most.

Conceptually, although the public in the relevant territory will perceive the meanings of the elements of the earlier mark as explained above, the contested sign has no meaning for part of the relevant public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the relevant public.

For the part of the relevant public that will associate the contested sign with the word ‘Clicker’ or will perceive it as a misspelling of the word ‘clicker’ and will understand the remaining words of the signs (i.e. ‘drive it again’, ‘click’ and ‘car’), the signs are conceptually similar to a low degree, as they will be associated with similar meanings, namely as a result of the words ‘click’ and ‘clicker’.

For the part of the relevant public that understands the expression ‘drive it again’ in the contested sign but perceives the element ‘clickar’ in this sign as meaningless, the signs are not conceptually similar. Although the expression ‘drive it again’ might be perceived as referring to ‘driving a car again’, it could also be perceived as referring to driving a motorbike, or any other means of transport, again. Therefore, the link between the expression ‘drive it again’ in the contested sign and the word ‘car’ in the earlier mark is too remote and so, as stated above, the signs are considered conceptually not similar for this part of the public.

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. As explained above in section c) of this decision, the element ‘click’ has a limited degree of distinctiveness in relation to the relevant goods and services. The element ‘car’ has an average degree of distinctiveness for some of the goods and services and is weak for others, such as business management and instructional and teaching material. However, the combination of the elements ‘click’ and ‘car’, as a whole, has no specific and obvious meaning that would describe any characteristic of the relevant goods and services. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the fact that its individual elements are weak.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, some of the contested services are identical or similar to the opponent’s goods and services and some of the contested goods and services are dissimilar to the opponent’s goods and services. The services that are identical or similar target both the public at large and business customers with specific professional knowledge or expertise. The degree of attention of the relevant public varies from average to high.

Both signs are figurative marks. Although both marks contain the letters ‘click’ and ‘*ar’, which are almost all of the letters of the earlier mark, in the Opposition Division’s view, this is not sufficient to lead to a likelihood of confusion or even a likelihood of association between the signs on the part of the relevant public.

As explained above, consumers generally perceive trade marks as a whole and, in the present case, they will perceive the contested sign as containing one visually dominant verbal element, ‘clickar’, with the additional verbal elements ‘DRIVE IT AGAIN’ below it, whereas they will split the earlier trade mark into three elements (‘click’, ‘&’ and ‘car’). The only commonality between the signs lies in the string of letters ‘click’, however, these letters are difficult to spot in the contested sign, since they are different colours and are incorporated in an otherwise meaningless word.

Furthermore, each of the elements of the earlier mark has a meaning and will be understood by the vast majority of the relevant public, whereas the dominant element of the contested sign will be perceived as one, most likely meaningless, word, while the words ‘drive it again’, whether they will be understood by the relevant public or not, do not have anything in common with the earlier mark.

Moreover, the coinciding string of letters ‘click’ forms an element with a low degree of distinctiveness in the earlier mark and therefore the impact of this commonality in the overall assessment of the similarity between the signs is reduced. Although, as explained above, part of the relevant public may associate the contested sign with the word ‘clicker’, which has some conceptual similarity to the word ‘click’ in the earlier mark, this is not sufficient to find any similarity between the signs. Finally, taking into account that likelihood of confusion must be appreciated globally and in the present case the signs have different numbers of elements, visually differ in their colours and aurally differ mainly due to the ampersand in the earlier mark and, if pronounced, the expression ‘drive it again’ in the contested sign.

Therefore, taking into account the abovementioned differences between the signs, it is considered that the differences outweigh the similarities between the signs.

Considering all of the above, there is no likelihood of confusion, including likelihood of association, on the part of the relevant public, even for identical or similar goods and services. Therefore, the opposition must be rejected.

COSTS

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Michaela SIMANDLOVA

Birute SATAITE-GONZALEZ

Ferenc GAZDA

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.