OPPOSITION No B 2 801 572

Continental Reifen Deutschland GmbH, Vahrenwalder Str. 9, 30165 Hannover, Germany (opponent), represented by Göhmann Rechtsanwälte Abogados Advokat Steuerberater Partnerschaft mbB, Landschaftstraße 6, 30159 Hannover, Germany (professional representative)

a g a i n s t

Continental Structural Plastics Inc., 255 Rex Blvd., 48326 Auburn Hills, United States of America (applicant), represented by Cabinet @Mark, 16, rue Milton, 75009 Paris, France (professional representative).

On 24/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 801 572 is upheld for all the contested goods and services.

2. European Union trade mark application No 15 608 912 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 608 912 (figurative). The opposition is based European Union trade mark registration No 11 564 838 (figurative). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PRELIMINARY REMARK

For the sake of completeness, the Opposition Division notes that the initial employee representative indicated in the notice of opposition has been replaced by the above professional representative in a communication to the Office dated 17/04/2018. Consequently, the applicant’s allegations in that regard remain immaterial and will not be further addressed.

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, inter alia, the following:

Class 1: Unprocessed plastics.

Class 42: Scientific and technological services and the associated research and drafts; industrial experiments and R&D services.

The contested goods and services are the following:

Class 1: Plastic molding compound for use in the manufacture of molded plastic articles.

Class 42: Engineering services in the field of plastics; product research and development; research and development in the field of plastics.

The applicant argues that no degree of similarity whatsoever can be established in relation to the goods and services in question as the opponent has not provided any reasoning concerning existence of such similarity. In that regard, the Opposition Division notes that the degree of similarity of the goods and services is a matter of law, which must be assessed ex officio by the Office even if the parties do not comment on it (16/01/2007, T‑53/05, Calvo, EU:T:2007:7, § 59). However, the Office’s ex officio examination is restricted to well-known facts, that is to say, ‘facts which are likely to be known by anyone or which may be learned from generally accessible sources’, which excludes facts of a highly technical nature (03/07/2013, T‑106/12, Alpharen, EU:T:2013:340, § 51). Indeed, what does not follow from the evidence/arguments submitted by the parties or is not commonly known should not be speculated on or extensively investigated ex officio (09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 31-32).

Contested goods in Class 1

The Opposition Division concurs with the opponent on the point that the contested plastic molding compound for use in the manufacture of molded plastic articles is in its essence unprocessed plastic used for the production of more elaborate plastic articles. To that extent it is included in, or at least overlaps with, the opponent’s unprocessed plastics. These goods are, therefore, considered identical.

Contested services in Class 42

The contested engineering services in the field of plastics; product research and development; research and development in the field of plastics are included in, or overlap with, the opponent’s industrial experiments and R&D services and scientific and technological services and the associated research and drafts to the extent that these services encompass activities accompanying the development of products for the plastic industry. Consequently, contrary to the applicant’s point of view, they are found identical.

b) Relevant public — degree of attention

In the present case, as commented by both parties, the goods and services found to be identical are directed at professional customers with specific know-how and experience in the engineering and R&D field, in particular in relation to plastics.

Given the specialised nature of the plastic compounds in Class 1 and the sophisticated character of the engineering and scientific services in Class 42, the fact that they are not commonly purchased and that they can be expensive, it is considered that the public’s degree of attentiveness will be above average for any of these goods and services.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The word ‘Continental’ contained in both signs will be understood among the relevant EU consumers, which will exclusively consist of professionals who will certainly have a basic comprehension of English as a working language. In its general meaning this word will refer to ‘something that belongs to or relates to a continent’. Likewise, the words ‘Structural’ and ‘Plastics’ of the contested sign will be broadly understood (at least as basic professional terms) as ‘constructional or organisational’ and ‘(plural form of) a specific material produced by a chemical process’, respectively.

The degree of distinctiveness of the above elements has been contested by the parties at different points and will be addressed below together with the arguments presented in that respect.

The applicant considers that the word ‘Continental’ is used in a different context in the signs and that, in the earlier mark, it will have an evocative character and a low degree of distinctiveness in relation to the goods and services in question, as it describes their geographical origin. The Opposition Division notes that in both marks the word ‘Continental’ is perceived as having the same concept, albeit accompanied by additional words in the contested sign. In addition, despite having a concept, it does not further convey a clear and unambiguous message as to the nature/characteristics of the goods and services involved (e.g. no specific geographical origin), hence, it is considered to have an average degree of distinctiveness in both marks.

However, the opponent argues that the element ‘Continental’ of the contested sign will be singled out and perceived on its own, which may lead to an immediate link between the signs on account of their coinciding element. The opponent bases its findings on the alleged weak distinctive character of the expression ‘Structural Plastics’ as a whole. Since the goods and services for which the applicant seeks protection are, indeed, plastic compounds and engineering and design services that are or might be related to this commercial field, some weight has to be given to the opponent’s allegations in that respect. The words of the sign applied for, when read as ‘Continental Structural Plastics’, do not convey a clear message, neither do they form a conceptually meaningful unit; consequently, they would be distinctive as a whole expression. However, as the opponent demonstrates, the words ‘Structural Plastics’, occupying the sign’s second line, may be to a certain extent allusive of the nature of the goods and services, hence with somewhat reduced distinctiveness, especially taking into account the non-distinctive character of the word ‘Plastics’ in relation to the goods/services. To conclude, the impact of these two components together will be diminished.

In addition, the figurative element depicting the silhouette of a rearing horse in the earlier mark has no relation to the goods and services in question and is deemed to be fully distinctive. By contrast, the figurative element of the contested sign, albeit distinctive as a whole, will be simply interpreted as the initials of the verbal elements of the sign, ‘C’ (continental), ‘S’ (structural) and ‘P’ (plastics). Consequently, instead of adding a new distinctive concept, the figurative element merely evokes the idea contained in the verbal part of the sign.

With respect to the abovementioned figurative elements, it is, nevertheless, 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 (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the figurative elements are of somewhat reduced impact.

Furthermore, contrary to the applicant’s assertions, the beginning of the earlier mark will be regarded as the fanciful stylised letters ‘Co’ and not as a figurative element of concentric circles. This is further supported by the fact that consumers are used to perceiving various types of fonts and stylised letters and generally focus on the verbal elements they embellish instead of the decorative elements of signs.

Given the larger size and primary position of the verbal element ‘Continental’ in the earlier mark, it is considered the more visually striking element.

Visually and aurally, the signs coincide in the distinctive verbal element ‘Continental’. They differ in the rest of verbal and figurative elements described above.

Consumers generally tend to focus on the beginning or top of a sign when they encounter a trade mark because reading takes place from left to right and from top to bottom, which makes the part placed at the left/top of the sign the one that first catches the attention of the reader. In this case, the verbal element ‘Continental’ is the component primarily catching attention in both marks.

Furthermore, it is unlikely that consumers will tend to pronounce the initials contained in the figurative element of the contested sign or to aurally refer to the horse image at the end of the earlier trade mark. Consequently, taking into account the above findings, including the reduced impact of certain components of the signs, they are found aurally and visually similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning conveyed by their coinciding elements ‘Continental’, the signs are conceptually similar to an average degree.

d) Distinctiveness of the earlier mark

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation in relation to the goods and services in Classes 1 and 42, which are the relevant goods and services in the present case.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se when considered in relation to these two classes. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in Classes 1 and 42 from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

Following the findings above, the goods and services are identical. They target professional consumers, whose degree of attention is deemed to be above average. The earlier mark enjoys a normal degree of distinctiveness as a whole.

The signs show similarities on a visual, aural and conceptual level. This is due to the fact that the earlier mark’s distinctive element ‘Continental’ is entirely incorporated in the contested sign, where it is positioned in first place, namely in the most prominent part of the sign and as the more or most distinctive verbal element. It is true that the signs contain additional components that will not go unnoticed by the public; however, as concluded above, for one reason or another these elements will have less impact on the consumer’s overall perception of the signs and may not be sufficient to outweigh the similarities arising from the coinciding verbal element ‘Continental’.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). The relevant consumer may see the contested application as being a brand variation of the earlier mark, based on an expansion line or as result the specialisation on a particular category of goods and services (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49.)

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 564 838. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the opposition is entirely successful based on Article 8(1)(b) EUTMR, there is no need to examine the remaining ground of the opposition, namely Article 8(5) EUTMR.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

María del Carmen SUCH SÁNCHEZ

Manuela RUSEVA

María Clara IBÁÑEZ FIORILLO

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.