OPPOSITION No B 2 837 022

Mac-Johnson Controls Colombia, S.A.S. MAC-JCI, Carrera 35 No. 10-300 Acopi, Yumbo – Valle, Colombia (opponent), represented by Claudio Prat Peñas, Ronda Ocho de Marzo número 77, 1º 2º, 08390 Montgat (Barcelona), Spain (professional representative)

a g a i n s t

Vaucluse Diffusion, 384 rue des Artisans, 84420 Piolenc, France (applicant), represented by Fidal Société d'avocats, 18 rue Félix Mangini - CS 99172, 69263 Lyon cedex 09, France (professional representative).

On 15/12/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 837 022 is upheld for all the contested services, namely:

Class 35: Presentation of goods on communication media, for retail purposes; administrative and commercial management of a shop or shopping centre; sales promotion and advertising for merchants with premises in shopping arcades; organisation of exhibitions and events for commercial or advertising purposes; promotion of goods for others; commercial information and advice for consumers (consumer advice shops).

2. European Union trade mark application No 15 680 424 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 680 424 , namely against some of the services in Class 35. The opposition is based on European Union trade mark registration No 4 122 834, for the word mark ‘MAC’, European Union trade mark registration No 4 027 587, for the figurative mark and European Union trade mark registration No 12 407 615, for the word mark ‘MAC POWER PACK GOLD PLUS’. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

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 Union trade mark registration No 4 122 834, ‘MAC’.

1. The goods and services

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

Class 9: Batteries for vehicles, excluding batteries for computers.

Class 35: Advertising, business management, business administration, office functions, purchasing, sales, import, export, commercial representation services for products, including batteries and vehicle products in general, excluding wheel rims for vehicles.

The contested services are the following:

Class 35: Presentation of goods on communication media, for retail purposes; administrative and commercial management of a shop or shopping centre; sales promotion and advertising for merchants with premises in shopping arcades; organisation of exhibitions and events for commercial or advertising purposes; promotion of goods for others; commercial information and advice for consumers (consumer advice shops).

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.

The contested administrative and commercial management of a shop or shopping centre is included in the broad category of the opponent’s business management. Therefore, they are identical.

The contested presentation of goods on communication media, for retail purposes; sales promotion and advertising for merchants with premises in shopping arcades; promotion of goods for others are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested organisation of exhibitions and events for commercial for advertising purposes are professional events organised by a specialised service provider in which to facilitate or encourage the promotion and sale of the client’s goods and services that can be offered to third parties, for example the organisation, arranging and conducting of an exhibition or trade fair on their behalf. The opponent’s advertising consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Therefore, the services under comparison have the same nature and the same general purpose. They are provided by the same specialised companies, have the same distribution channels and target the same relevant public. Furthermore, they are complementary. Consequently, these services are similar.

The contested commercial information and advice for consumers (consumer advice shops) are services involving a variety of business management and/or business administration activities. They have a similar purpose, relevant public, and providers to the opponent’s business management in Class 35. Consequently, they are also considered similar.

2. 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 relevant services are specialised services directed at business customers with specific professional knowledge or expertise namely companies or business owners. Due to the degree of sophistication and the cost of some of the business-related services, their infrequent purchase and the serious and long-term impact they may have on the purchaser’s business, the relevant public’s degree of attention in relation to these services will vary from average to higher than average.

3. The signs

MAC
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 sign is a word mark ‘MAC’. For part of the public such as the English-speaking public, the word will be understood as referring to ‘Mac raincoat, especially one made from a particular kind of waterproof cloth’ (Collins English Dictionary, online edition). It may also stand for mackintosh, a type of personal computer. On the other hand, the Romanian and Bulgarian public will associate the term with a poppy flower and greasy substances respectively. For the remaining part of the public, this term has no meaning. In any case, it does not relate to the relevant services and is, therefore, distinctive to an average degree.

The contested sign is a figurative mark featuring the words ‘MAC DAN’ and a figurative element. The words are written one upon the other in white bold uppercase lettering. The figurative element is an orange geometrical shape of a merely decorative character. The word ‘MAC’ of the contested mark will be understood in the same way as described above. Its distinctiveness in relation to the services in question should be seen as normal. The other word element ‘DAN’ may refer to any of ten degrees of advanced proficiency in judo or karate or to a male given name in Romanian. It also means ‘day’ in Slovenian. Irrespective of the various meanings given to this word element, it does not relate in any way to the relevant services and has a normal degree of distinctiveness.

Neither of the signs has elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘MAC’ which constitutes the earlier mark in its entirety and is the first word element of the contested sign. They differ in the word element ‘DAN’ and the figurative element of the contested sign, which have no equivalents in the earlier mark. However, considering that the coincident word constitutes the beginning of the contested mark and the figurative stylization serves merely decorative purposes, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛MAC’, present identically in both signs. The pronunciation differs in the sound of the letters ‘DAN’ of the contested sign, which have no counterparts in the earlier mark. However, consumers generally tend to focus on the first element of a sign when confronted with a trade mark. This is explained by the fact that the public reads from top to bottom and from left to right, which makes the element placed at the top and left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, it is most likely that the word ‘MAC’ will be pronounced as the first word in the contested sign. Consequently, the signs are aurally similar to an average degree.

Conceptually, for the part of the public for which neither of the signs has a meaning, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs. On the other hand, the remaining part of the public will understand either both ‘MAC’ and ‘DAN’ or only the latter one. Therefore, for the part of the public for which the element ‘MAC’ is meaningful, the signs are conceptually similar to an average degree. For the remaining scenario, the signs are not similar conceptually.

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

4. 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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled caselaw, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29).

Evaluating likelihood of confusion also 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).

The services at issue are partly identical and partly similar. The earlier mark enjoys a normal degree of distinctiveness and the level of attention of the relevant public varies from average to higher than average. Furthermore, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree 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 signs are visually and aurally similar to an average degree. Conceptually, they are considered similar to an average degree for the part of the public that will perceive the meanings of the coincident word ‘MAC’. For the remaining part of the public the conceptual aspect either does not affect the assessment of the similarity of the signs or the signs are not similar. The whole three letter word ‘MAC’ of the earlier mark is entirely included in the contested sign and constitutes its beginning. The other word element of the contested sign, although distinctive, is less likely to attract the consumers’ attention which naturally will focus on the beginning of a sign; and simply because it appears in a less prominent position underneath the coincident word ‘MAC’. Also the additional figurative element of the contested sign is of significantly lesser importance, if any at all, as it serves merely decorative purposes. Consequently, even the highly attentive consumers in question may believe that the contested trade mark is a new brand line or a recent development under the opponent’s mark, considering that it will be applied to services which are partly identical and partly similar to those marketed under the ‘MAC’ brand. Nowadays, it is a common market practice for brands to identify new version or a new sub-brand through the use of additional verbal or figurative elements in combination with the main (‘house’) brand. In other words, even the highly attentive consumers may confuse the origins of services at issue by assuming that they come from the same undertaking or from economically-linked undertakings.

Considering all the above, the Opposition Division finds that 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 4 122 834, ‘MAC’.

It follows from the above that the contested trade mark must be rejected for all the contested services.

As the earlier right European Union trade mark registration No 4 122 834, ‘MAC’ leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Oana-Alina STURZA

Arkadiusz GORNY

Loreto URRACA LUQUE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.