OPPOSITION No B 3 047 380

Nexen Tire Corporation, #30 Yusan-dong, Yangsan City, Kyongsangnam-do, Republic of Korea, (opponent), represented by Società Italiana Brevetti S.p.A., Corso dei Tintori 25, 50122 Firenze, Italy (professional representative)

a g a i n s t

Pirelli Tyre S.p.A., Viale Piero e Alberto Pirelli 25, 20126 Milano (MI), Italy (applicant), represented by Porta Checcacci & Associati S.p.A., Via V. Colonna 4, 20149 Milano, Italy (professional representative)

On 08/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 380 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 17 070 012 for the word mark 'ROADONE'. The opposition is based on 1) Austrian trade mark registration No 138 200 and 2) Finnish trade mark registration No 120 553, both for the figurative mark . 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.

1. The goods and services

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

1. Austrian trade mark registration No 138 200:

Class 12: Vehicle tires and air hoses for vehicle tires.

2. Finnish trade mark registration No 120 553:

Class 12: Vehicle wheels, wheel tires for vehicles and inner tubes.

The contested goods and services are the following:

Class 12: Pneumatic tyres; Pneumatic, semi-pneumatic and/or solid tyres; Vehicle wheels; Wheel trims; Treads for vehicles; Inner tubes and mousse for vehicle tyres; Rubber materials for re-capping tyres.

Class 35: Business consultancy in relation to tyres; Commercial services consisting of facilitating and business organisation of maintenance services, repair of tyres, repair of cars; Tracking and monitoring of vehicle fleets for others; Business consultancy relating to the management of tyres; Data management services; Customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes; Distribution (sale) via shops selling automotive spare parts and accessories, repair kits for tyres, pressure indicators for tyres, instruments for fitting and removing tyres and wheels; Providing of information and consultancy in relation to business management of tyres of vehicle fleets.

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 pneumatic tyres; pneumatic, semi-pneumatic and/or solid tyres are included in the broad categories of the opponent’s vehicle tires and wheel tires for vehicles of earlier marks 1 and 2 respectively. Therefore, they are identical.

The contested inner tubes for vehicle tyres are included in the opponent’s air hoses for vehicle tires (which must be interpreted as referring to inner tubes) and inner tubes of earlier marks 1 and 2 respectively. Therefore, they are identical.

The contested vehicle wheels are identically listed in earlier mark 2 and are highly similar to the opponent’s vehicle tires of earlier mark 1 since they can target the same relevant public, share the same distribution channels and they are complementary.

The contested mousse for vehicle tyres are highly similar to the opponent’s vehicle tires and wheel tires for vehicles of earlier marks 1 and 2 respectively since they coincide in distribution channels, target the same relevant public and are often produced by the same undertakings. Furthermore, they are complementary.

The contested wheel trims; treads for vehicles are similar to the opponent’s vehicle tires and wheel tires for vehicles of earlier marks 1 and 2 respectively since they can share the same distribution channels, target the same relevant public and can also be produced by the same undertakings.

The contested rubber materials for re-capping tyres are similar to the opponent’s air hoses for vehicle tires and inner tubes of earlier marks 1 and 2 respectively since they can share the same distribution channels, target the same relevant public and can also be produced by the same undertakings.

Contested services in Class 35

As a preliminary remark, the Opposition Division notes that services comprise economic activities provided to third parties and selling or distributing one’s own goods is thus not a service. Therefore, the contested services of distribution (sale) via shops selling automotive spare parts and accessories, repair kits for tyres, pressure indicators for tyres, instruments for fitting and removing tyres and wheels must be understood as referring to retail services related to the types of goods listed.

In this respect, retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested distribution (sale) via shops selling automotive spare parts and accessories, repair kits for tyres is similar to a low degree to the opponent’s vehicle tires and air hoses for vehicle tires and vehicle wheels, wheel tires for vehicles and inner tubes of earlier marks 1 and 2 respectively.

However, the contested distribution (sale) via shops selling pressure indicators for tyres, instruments for fitting and removing tyres and wheels is not similar to the opponent’s goods in Class 12 since the goods at issue are not identical. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The contested services must be considered to consist in bringing together, and 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 goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Therefore, the contested distribution (sale) via shops selling pressure indicators for tyres, instruments for fitting and removing tyres and wheels is dissimilar to the opponent’s goods in Class 12.

As regards the contested business consultancy in relation to tyres; commercial services consisting of facilitating and business organisation of maintenance services, repair of tyres, repair of cars; tracking and monitoring of vehicle fleets for others; business consultancy relating to the management of tyres; data management services; customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes; providing of information and consultancy in relation to business management of tyres of vehicle fleets, they consist of business management, administration and assistance services as well as advertising services which are aimed at supporting or helping other businesses to do or improve business. The nature and purpose of these services are fundamentally different from the manufacture of goods, including of the opponent’s goods in Class 12. Furthermore, the goods and services under comparison are not complementary to each other or in competition; they do not share the same distribution channels and are not normally produced or provided by the same undertakings. Therefore, these contested services are also dissimilar to the opponent’s goods.

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 goods and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise in the field of vehicle tires.

The degree of attention is considered to be average.

3. The signs

	ROADONE
Earlier trade mark	Contested sign

The relevant territories are Austria and Finland.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier marks are figurative marks consisting of the verbal element ‘ROADSTONE’ depicted in black bold upper case letters and the contested sign is the word mark ‘ROADONE’.

Although both signs are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). In this respect, all the elements of both signs, namely the common element ‘ROAD’, the element ‘STONE’ in the earlier marks and the element ‘ONE’ in the contested sign, are basic English words that will be understood by the relevant public both in Austria and Finland. The opponent argues that it cannot be ruled out that a part of the relevant public will not understand these words since English is not the native language in the relevant territories. However, as regards the relevant public in Finland, it is a well-known fact that the general public in Finland has at least a basic understanding of English (22/05/2012, T-60/11, Suisse Premium, EU:T:2012:252, § 50) and will therefore readily understand these basic English words. Furthermore, as regards the Austrian public, ‘ONE’ is a very basic English word, ‘STONE’, apart from being a basic English word, is also quite close to the German word ‘stein’ and as regards the basic English word ‘ROAD’, it is also present in other English expressions that are used in the everyday German language, such as ‘offroad’, ‘roadtrip’ and ‘roadmovie’ (see to this effect www.duden.de/suchen/dudenonline/road consulted on 03/04/2019). Consequently, the Opposition Division considers that if there is a part of the relevant public in Austria and Finland that would not understand the basic English words ‘ROAD’, ‘STONE’ and/or ‘ONE’, that part of the public would be negligible.

Therefore, the common element ‘ROAD’ will be understood as meaning ‘a long piece of hard ground which is built between two places so that people can drive or ride easily from one place to the other’. In this respect, vehicle tyres are produced with different kinds of treading and patterns to suit different kinds of surfaces and intended uses by the consumer. Therefore, this element in both signs will be perceived as, at most, a weak element alluding to the characteristics of the goods concerned being suitable for roads and other hard surfaces or to their intended purpose being for goods of such characteristics, including services related to this type of goods.

However, the element ‘STONE’ in the earlier marks, which will be understood as meaning ‘a hard solid substance found in the ground and often used for building houses’ has no particular meaning in relation to the goods concerned and is, therefore, distinctive to a normal degree.

As regards the element ‘ONE’ in the contested sign, which will be understood as meaning the number ‘1’, it is a word that is commonly used in trade to designate positive characteristics of the goods (or services), such as their quality (e.g. No 1 as in of the ‘best quality’). Therefore, this element of the contested sign is likely to be perceived as conveying a pure promotional statement that the goods provided (or relevant to the services concerned) are best quality products and, thus also, as a weak element.

Visually, the signs coincide in the word ‘ROAD’, present identically at the beginning of both signs. However, this element is at most only weak as explained above. The signs also coincide in the letters ‘-ONE’ which will however be perceived as consisting of the word ‘ONE’ in the contested sign, which is also weak, whereas these letters will clearly be perceived as forming part of the distinctive word ‘STONE’ in the earlier marks.

Therefore, even if the only difference between the signs essentially is the letters ‘ST’ in the middle of the earlier marks as argued by the opponent, since the earlier marks will be dissected into the two elements ‘ROAD’ and ‘STONE’, this difference will not go unnoticed by consumers, in particular since ‘STONE’ will be perceived as the most distinctive element of the earlier marks. Furthermore, since both ‘ROAD’ and ‘ONE’ in the contested sign are only weak as such, those elements will primarily be perceived as having distinctive character only because of their combination.

Therefore, based on the overall impression given by the marks, bearing in mind, in particular the perception and distinctiveness of their components, the signs are visually similar to an average degree overall.

Aurally, the opponent argues that the marks share the sound of the identical prefix ‘ROAD-’ and the identical suffix ‘-ONE’ and that they are therefore aurally similar overall. However, since the relevant public will perceive the signs as consisting of English words that they know, they are also likely to be pronounced according to English pronunciation rules. Therefore, even if the signs share the identical sound of the word ‘ROAD’ at the beginning, it is at most only weak and whereas the additional distinctive word ‘STONE’ in the earlier marks will be pronounced as ‘stoʊn’, the additional weak word ‘ONE’ in the contested sign will be pronounced as ‘wʌn’. As a result, even if the signs also share the letters ‘-ONE’, their pronunciation in each sign will be clearly different as outlined above.

Therefore, the signs are only aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although both signs will be associated with the concept of ‘road’, this concept is at most only weak and whereas the earlier marks will also be associated with the distinctive concept of ‘stone’ as explained above, the additional element in the contested sign will instead be associated with the weak concept of ‘one’ as also explained above.

Therefore, the signs are also conceptually similar only to a low degree.

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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

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 in question from the perspective of the public in the relevant territories. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a weak element in the marks, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

As already mentioned above, 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).

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, the goods and services concerned have been found partly identical or similar to varying degrees and partly dissimilar. The degree of attention of the relevant public is average.

The signs have been found to be visually similar to an average degree and aurally and conceptually similar to a low degree, mainly on account of the coincidence in both signs of the word ‘ROAD’ at their beginning. However, in spite of the coincidence in ‘ROAD’, this element is at most only weak in relation to the goods and services concerned and even if the respective additional words in both signs also share the letters ‘-ONE’, the signs will readily be perceived by consumers as containing two different words, namely ‘STONE’ in the earlier marks as opposed to ‘ONE’ in the contested sign and thus with a clearly different conceptual connotation. As a result, the most distinctive element of the earlier marks, ‘STONE’, will not be perceived as being present in the contested sign or confused with the word ‘ONE’.

Therefore, even if some of the goods are identical, the relevant consumers, who are reasonably well informed and reasonably observant and circumspect, are not likely to believe that goods or services offered under the contested sign originate from the same or an economically linked undertaking to that selling goods under the earlier marks even if there is a certain degree of similarity between them.

Considering all the above, there is no likelihood of confusion on the part of the public in the relevant territories.

The opponent refers to previous decisions of the Office to support its arguments that there is a likelihood of confusion on the part of the public, namely:

• 15/06/2017, B 2752213, QUANTEC/QUANTITEC;

• 09/06/2017, B 2177809, PLANTAVET/PLANVET;

• 02/05/2017, B 2722687, EQUIPUR/EQUIKAPUR;

• 23/09/2015, R 2629/2014-1, DIGESTMAX/DIGEMAX;

• 27/01/2014, B 1955957, CERATOSIL/CERASIL;

• 11/07/2013, B 2025917, MATRICIUM/MATRIUM;

• 13/06/2013, B 1990822, KARAVAN/KARAKOVAN; and

• 22/05/2013, R 0643/2012-2, BIONICA/BIONORICA.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. However, even though the Office is not bound by its previous decisions (30/06/2004, T-281/02, Mehr fur Ihr Geld, EU:T:2004:198), their reasoning and outcome should still be duly considered when deciding upon a particular case. In this respect, the Opposition Division notes that in most of the cases referred to, the signs were found to convey no concepts either in part or not at all which is not the case in the present proceedings. Furthermore, in one case (DIGESTMAX/DIGEMAX) the signs were found to be conceptually highly similar and in another case (KARAVAN/KARAKOVAN) it was found that even if one of the signs conveyed a concept whereas the other sign was found to be meaningless, they were similar overall, both signs consisted of one word and the earlier mark was distinctive. Again, this is not the case in the present proceedings where both signs will immediately be perceived as consisting of two words both of which have clear conceptual meanings that are different and the coinciding concept of which is, at most, only weak. As a result, the structure of the signs in dispute in the cases referred to by the opponent and their particular circumstances are not comparable to the structure of the signs and the particular circumstances relevant to the case at hand. Consequently, the previous cases cited by the opponent are not of such a nature as to alter the outcome reached above.

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

Begoña URIARTE VALIENTE

Sam GYLLING

Sandra IBAÑEZ

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.