OPPOSITION DIVISION




OPPOSITION No B 2 470 097


Perusahaan Otomobil Nasional Sdn. Bhd., Centre of Excellence Complex, Km 33.8

Westbound Shah Alam Expressway, 47600 Subang Jaya, Selangor Darul Ehsan, Malaysia (opponent), represented by Fox Williams LLP, 10 Finsbury Square, EC2A 1AF London, United Kingdom (professional representative)


a g a i n s t


Spirra Europe B.V., It Eilân 3, 8497 NK, Goëngahuizen, Netherlands (applicant), represented by De Merkplaats B.V., Herengracht 227, 1016 BG, Amsterdam, Netherlands (professional representative).


On 28/09/2018, the Opposition Division takes the following



DECISION:


1. Opposition No B 2 470 097 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 13 261 011 for the figurative mark , namely against all the goods and services in Classes 12, 35 and 37.

The opposition is based on the following earlier rights:

  1. European Union trade mark registration No 8 545 105  ;

  2. European Union trade mark registration No 1 593 201

  3. UK trade mark registration No 2 227 660 ;

  4. UK trade mark registration No  2 232 583 ;

  5. European Union trade mark registration No 1 670 066 ;

  6. the non-registered trade mark in all EU countries;

  7. the non-registered trade mark in all EU countries;

  8. Cypriot trade mark registration No 56 248 ;

  9. Cypriot trade mark registration No 56 247 ;

  10. Cypriot trade mark registration No 56 249 ;

  11. Cypriot trade mark registration No 56 562 ;

  12. Maltese trade mark registration No 31 524 ;

  13. Maltese trade mark registration No 31 525 ;

  14. Maltese trade mark registration No 31 743 ;

  15. Maltese trade mark registration No 32 730 .


The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to all the registered marks and Article 8(4) EUTMR in relation to the non-registered trade marks.


SUBSTANTIATION of all national registered trade marks


According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.


It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.


According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.


According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.


In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part).


In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier registered Maltese, Cypriot and UK trade marks on which the opposition is based.


On 13/02/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after an extension and suspension of the proceedings, on 24/04/2018.


The opponent did not submit any evidence concerning the substantiation of the earlier trade marks.


According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.


The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks. The examination of the opposition will proceed based on the remaining earlier rights.


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 trade mark registrations No 1 593 201 and No 1 670 066.



  1. The goods and services


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


EUTM No 1 593 201:


Class 12: Motor land vehicles and parts, fittings and accessories therefor.


Class 16: Books, manuals and printed matter, all relating to motor land vehicles.


Class 37: Repair, maintenance and modifications of motor land vehicles.


EUTM No 1 670 066:


Class 25: Articles of clothing, footwear, headgear.


The contested goods and services are the following:


Class 12: Vehicles; Apparatus for locomotion by land, air or water; Parts and fittings for the aforesaid goods not included in other classes.


Class 35: Advertising; Business management; Business administration; Office functions; Public relations and sales promotion; Import and export, purchase and sale, and retailing and wholesaling of consumer goods, namely vehicles, parts and fittings, games, textile goods, clothing, sporting articles, fashion and fashion accessories; Business mediation in the purchase, sale, import and export of consumer goods, namely vehicles, parts and fittings, games, electronic and household goods, textile goods, clothing, sporting articles, fashion and fashion accessories; The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods, including such services provided online from a computer database relating to consumer goods, namely vehicles, parts and fittings, games, textile goods, clothing, sporting articles, fashion and fashion accessories; Business mediation in the import and export, purchase and sale, and retailing and wholesaling of consumer goods, namely vehicles, parts and fittings, games, electronic and household goods, textile goods, clothing, sporting articles, fashion and fashion accessories; Marketing techniques; Business mediation in the trade, import and export, purchase and sale of goods, in particular facade systems and the underlying metal structures, solar panels, solar cells and other such renewable energy conversion installations, electronic apparatus which operates using renewable energy, energy, and other apparatus and installations which operates using renewable energy or is intended for the generation of renewable energy; Administrative processing of purchase orders; Compilation of statistics; Market prospecting, research and analysis; Opinion polling; Compilation of information into computer databases; Data file administration; Organisation of trade fairs and exhibitions for commercial or advertising purposes; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not provided via electronic channels, including the Internet.


Class 37: Building construction; Installation services relating to car parts; Vehicle maintenance and repair; Providing of charging points for energy for electricity containers and vehicles; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not via electronic channels, including the Internet.



Some of the contested goods and services are identical or similar to goods and services on which the opposition is based, for example the contested vehicles in Class 12 include as a broad category the opponent’s motor land vehicles. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.


  1. 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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.


For some of the goods and services at hand, such as vehicles, the degree of attention will be high. Taking into consideration the price of cars, 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 (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T‑63/09, Swift GTi, EU:T:2012:137, § 39-42). For others, such as books, the degree of attention will be no more than average.


Therefore, in the present case 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.


  1. The signs




Earlier trade marks


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 marks are figurative marks in black and white depicting a side view of the head of a roaring large cat, facing to the right and in a circle. The animal has a chevron shape on its cheek and two black triangular shapes at the back of its head. The ear, chin, forehead, mouth and nose are represented by triangular shapes as well. The eye is represented by a chevron. The verbal element ‘PROTON’ in white uppercase standard characters is placed above. All these elements are inside a black shield with a white border.


The contested sign is a figurative mark depicting a side view of the head of a roaring large cat facing to the left. The head is depicted in black with four white triangular shapes at the back. The nose, forehead and mouth are rounded, and the whole element is inside a white triangle with black borders which are incomplete on one side.


The word ‘PROTON’ included in the earlier sign will be associated with an atomic particle that has a positive electrical charge by a large part of the relevant public as this word exists in many, if not all, EU languages. As it has no direct and clear meaning in relation to the goods and services in question, it is considered distinctive.


The depiction of a large cat present in all signs, has no clear meaning in relation to the goods and services in question. As such it is considered distinctive.


The signs have no elements that could be considered clearly more dominant than other elements.


Visually, all signs contain a depiction of a head of a roaring large cat. However, their representations differ substantially since the animals are facing in opposite directions, in the earlier signs the animal’s head is depicted in black whereas in the contested sign it is in white. The animals show also differences in the way their features, such as their eyes and ears, are depicted. Therefore, the ways the figurative elements of the signs are depicted have a significant impact on the visual impression of the signs, especially since the contested mark is purely figurative. Moreover, the earlier marks contain a distinctive verbal element ‘PROTON’ which has no counterpart in the contested mark. In this respect it needs to be noted 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).


Therefore, the signs are similar to a low degree.


Aurally, 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, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the distinctive figurative elements of all signs will be associated with the same concept by the public under analysis, namely the concept of a feline predator such as a tiger, and differ in the distinctive element ‘PROTON’ of the earlier signs, the signs are conceptually similar to an average degree.


As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.


  1. Distinctiveness of the earlier marks


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 claimed that the earlier trade marks enjoy enhanced distinctiveness but did not file any evidence in order to prove such a claim.


Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.


  1. Global assessment, other arguments and conclusion


In the present case, the goods and services are assumed to be identical and they are directed at the public at large and at business customers. The level of attention varies from average to high.


The signs are similar to a low degree from a visual perspective and conceptually similar to an average degree. An aural comparison is not possible as the contested sign is purely figurative.


Considering all the above, the considerable visual differences between the signs caused by the different depictions of the large cat are particularly relevant when assessing the likelihood of confusion between them. Moreover, the earlier signs consist also of the distinctive verbal element ‘PROTON’ which is clearly visible in the signs due to its position and size. Therefore, the visual differences between the signs are clearly perceptible and are sufficient to override the conceptual similarity. Furthermore, the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public (judgment of 11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 24). However, in the present case, the opponent has not proven that its earlier marks are particularly distinctive by virtue of intensive use or reputation.


Taking into account the low degree of visual similarity between the signs which results in sufficiently different overall impressions they create, the Opposition Division finds that even assuming that the goods and services are identical, it is highly unlikely that, even in case of the average consumer with a normal level of attentiveness, the contested sign would bring to mind the earlier marks, especially taking into account that the earlier signs contain a verbal element that is not present in the contested sign which plays an important role in differentiating between the signs.


Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.


The opponent has also based its opposition on European Union trade mark registration No 8 545 105 for the figurative mark  .


The other earlier right invoked by the opponent is even less similar to the contested mark. This is because it contains colours, which are not present in the contested trade mark. Moreover, they cover the same scope of goods and services as the marks that have already been compared. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.


REPUTATION — ARTICLE 8(5) EUTMR


According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.


According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.


It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.


According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.


According to Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part), when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.


In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.


On 13/02/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after an extension and suspension of the proceedings, on 24/04/2018.


The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.


Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.


NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR


According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:


(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;


(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.


The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.


According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.


It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.


According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.


According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.


In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier signs in the course of trade.


On 13/02/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after an extension and suspension of the proceedings, on 24/04/2018.


The opponent did not submit any evidence of use in the course of trade of the earlier signs on which the opposition is based.


Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.


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



Helen Louise MOSBACK


Katarzyna ZANIECKA

Anna BAKALARZ




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.

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