OPPOSITION No B 3 047 276

Bridgestone Corporation, 1-1, Kyobashi 3-chome, Chuo-ku, 104-8340 Tokyo, Japan (opponent), represented by Marks & Clerk LLP, 90 Long Acre, WC2E 9RA London, United Kingdom (professional representative)

a g a i n s t

Tzu-Chin Chiang, No. 263 Xixing Rd., 512 Yongjing Township Changhua County, Taiwan (applicant), represented by Zeitler Volpert Kandlbinder Patent- und Rechtsanwälte Partnerschaft mbB, Herrnstr. 44, 80539 Munich, Germany (professional representative).

On 04/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 276 is partially upheld, namely for the following contested goods:

Class 12: Parts for motor land vehicles; steering wheels; vehicle seats; safety seats for use in cars; safety seats for children; mirrors for vehicles; windscreen wipers; vehicle wheel rims; seat covers for vehicles; head rests for use in vehicles; fenders and mudguards (for land vehicles); automobile tires (tyres); casings for pneumatic tires (tyres); inner tubes for pneumatic tires (tyres); vehicle wheel tires (tyres); modular chassis systems for vehicles; petrol caps; suspension subsystems and components; shock absorbers; rear view mirrors; speed change gears; aero-dynamic fairings for vehicles; brake pads for land vehicles; brake shoes for land vehicles; directional signals for vehicles; door panels for land vehicles; intake air system for motor land vehicles.

2. European Union trade mark application No 17 258 815 is rejected for all the above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 045 024 for the word mark ‘WATTSTONE’. The opposition is based on European Union trade mark registration No 13 316 161 for word mark ‘STONE’, international trade mark registration No 1 105 946 designating the European Union for the figurative mark and European Union trade mark registration No 3 574 274 for the word mark ‘BRIDGESTONE’. The opponent invoked Article 8(1)(b) for the three rights and Article 8(5) EUTMR only insofar international trade mark registration No 1 105 946 and European Union trade mark registration No 3 574 274 are concerned.

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:

European Union trade mark registration No 13 316 161

Class 12: Automobiles and their parts and fittings; tires; retreaded tires; two-wheeled motor vehicles and their parts and fittings; bicycles and their parts and fittings; electric bicycles and their parts and fittings; aircrafts and their parts and fittings.

European Union trade mark registration No 3 574 274

Class 12: Vehicles and parts and fittings for vehicles; apparatus for vehicles and tyres; treads for vehicles; brake pads and brake linings; tracks for vehicles; rubber goods for vehicles and tyres; tyres; wheels for vehicles; inner tubes, rims and covers for vehicle wheels; inner tubes for vehicle tyres; repair materials of rubber for tyres and inner tubes; repair outfits for tyres; non-skid apparatus and devices for vehicle tyres; golf carts and golf trolleys; non-metallic hoses for use in hydraulic systems in vehicles; fenders for ships; parts and fittings for all the aforesaid goods.

International trade mark registration No 1 105 946 designating the European Union

Class 12: Automobiles and their parts and fittings; tires for passenger cars; tires for trucks; tires for buses; tires for racing cars; tires for automobiles; retreaded tires for passenger cars; retreaded tires for trucks; retreaded tires for buses; retreaded tires for racing cars; retreaded tires; retreaded tires for automobiles; inner tubes for passenger cars; inner tubes for trucks; inner tubes for buses; inner tubes for racing cars; inner tubes for automobiles; wheels and rims for passenger cars; wheels and rims for trucks; wheels and rims for buses; wheels and rims for racing cars; wheels and rims for automobiles; tread rubber for retreading tires for the above-mentioned vehicles; two-wheeled motor vehicles and their parts and fittings; tires for two-wheeled motor vehicles; inner tubes for two-wheeled motor vehicles; wheels and rims for two-wheeled motor vehicles; bicycles and their parts and fittings; tires for bicycles; inner tubes for bicycles; wheels and rims for bicycles; aircraft and their parts and fittings; tires and inner tubes for aircraft; adhesive rubber patches for repairing tubes or tires; tread rubber for retreading tires for two-wheeled motor vehicles or bicycles; tread rubber for retreading tires for aircraft; tread used to retread tires; preformed tire tread; rubber patches for repairing vehicle tread; shock absorbers (for land vehicles); air springs for land vehicles; shaft couplings or connectors (for land vehicles); fenders for vessels (boat side protectors); seat cushions for vehicles; air springs for railway cars; vehicle bumpers; suspension shock absorbers for vehicles; suspension springs for vehicles; four-wheeled go-carts; tricycles for infants; tires for off-the-road vehicles; tires for scrapers; tires for motor graders; tires for shovel loaders; tires for tire rollers; tires for wheeled cranes; tires for cranes; tires for snow plows; tires for pavers; tires for mining machinery.

Class 35: Retail services or wholesale services for tires and parts and fittings for automobiles.

The contested goods and services are the following:

Class 12: Parts for motor land vehicles; steering wheels; vehicle seats; safety seats for use in cars; safety seats for children; mirrors for vehicles; windscreen wipers; vehicle wheel rims; seat covers for vehicles; head rests for use in vehicles; fenders and mudguards (for land vehicles); automobile tires (tyres); casings for pneumatic tires (tyres); inner tubes for pneumatic tires (tyres); vehicle wheel tires (tyres); modular chassis systems for vehicles; petrol caps; suspension subsystems and components; shock absorbers; rear view mirrors; speed change gears; aero-dynamic fairings for vehicles; brake pads for land vehicles; brake shoes for land vehicles; directional signals for vehicles; door panels for land vehicles; intake air system for motor land vehicles.

Class 35: Import-export agencies; advertising; advertising by mail order; auctioneering; commercial information agencies; communication media (presentation of goods on -), for retail purposes; compilation of business information into computer databases; demonstration of goods; exhibitions (organization of -) for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; retail purposes (presentation of goods on communication media, for -).

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 automobile tires [tyres]; vehicle wheel tires [tyres] are included in the broad category of the opponent’s tires covered by European Union trade mark registration No 13 316 161. Therefore, they are identical.

The contested parts for motor land vehicles; steering wheels; vehicle seats; safety seats for use in cars; safety seats for children; mirrors for vehicles; windscreen wipers; vehicle wheel rims; seat covers for vehicles; head rests for use in vehicles; fenders and mudguards (for land vehicles); casings for pneumatic tires (tyres); inner tubes for pneumatic tires (tyres); modular chassis systems for vehicles; petrol caps; suspension subsystems and components; shock absorbers; rear view mirrors; speed change gears; aero-dynamic fairings for vehicles; brake pads for land vehicles; brake shoes for land vehicles; directional signals for vehicles; door panels for land vehicles; intake air system for motor land vehicles are included in the broad category of, or overlap with, the opponent’s automobiles and their parts and fittings covered by earlier European Union trade mark registration No 13 316 161. Therefore, they are identical.

Contested services in Class 35

The contested import-export agencies; advertising; advertising by mail order; auctioneering; commercial information agencies; communication media (presentation of goods on -), for retail purposes; compilation of business information into computer databases; demonstration of goods; exhibitions (organization of -) for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; retail purposes (presentation of goods on communication media, for -) are all services related to advertising, marketing and business administration.

Advertising services consist 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. Many different means and products can be used to fulfil this objective. 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.

Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

These services do not share any point of contact with the opponent’s services in Class 35. Neither are they related to the goods in Class 12 covered by the three earlier trade marks now under comparison. They are of a different nature. They have different intended purpose. Also, they are not complementary or in competition and they do not share the same distribution channels. Finally, they are provided by different companies. In view of all the foregoing, they are deemed to be dissimilar.

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 goods found to be identical or similar are directed at the public at large and also 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, the specialised nature of the goods, or terms and conditions of the purchased goods.

In particular, taking into consideration the price of some parts and accessories of cars, and also considering that safety when driving might be of some concern in relation to some of the goods, consumers are likely to pay a higher degree of attention than for less expensive purchases.

c) The signs

STONE (EUTM 13 316 161) BRIDGESTONE (EUTM 3 574 274) (international trade mark registration No 1 105 946 designating the European Union)	WATTSTONE
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 European Union trade mark registration No 13 316 161 is a word mark consisting of the word ‘STONE’. The earlier European Union trade mark registration No 3 574 274 is a word mark consisting of the word ‘BRIDGESTONE’. The earlier international trade mark registration No 1 105 946 designating the European Union is a figurative mark consisting of the word ‘BRIDGESTONE’ depicted in fanciful black characters. The contested sign consists of the word ‘WATTSTONE’.

For a part of the public, as for instance for the English-speaking consumers, the signs have a meaning, since they will recognize the words ‘STONE’ per se and within the words ‘BRIDGESTONE’ and ‘WATTSTONE’ (‘a piece of rock or hard mineral substance’), but also the word ‘WATT’ (as, inter alia, a unit of measurement of electrical power) and ‘BRIDGE’ (as, inter alia, ‘a structure carrying a road, path or railway’).

For another part of the relevant public, such as the Spanish-, Italian- and Polish-speaking consumers, the signs have no meaning, with the exception of the word ‘WATT’ of the contested sign, which in some cases will be recognized and will be also understood as explained above.

As the elements of the signs have no meaning for the relevant public or they are not descriptive, allusive or otherwise weak for the relevant goods and services, they are all distinctive.

The earlier international trade mark registration No 1 105 946 designating the European Union has no elements that could be considered clearly more dominant than other elements.

Also, in particular as regards earlier international trade mark registration No 1 105 946 and European Union trade mark registration No 3 574 274, account must be taken on the fact that consumers generally tend to focus on the beginning of a sign, which in this case might be the word or letters ‘BRIDGE’, when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the earlier European Union trade mark registration No. 13 316 161 and the contested sign coincide in the distinctive element ‘STONE’. However, they differ in the additional and distinctive element ‘WATT’ of the contested sign. Therefore, these signs are deemed to be visually similar to an average degree.

As regards earlier European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946 designating the European Union, they coincide with the contested sign to the extent that they share the letters ‘STONE’, although in the case of the earlier international trade mark registration No 1 105 946 depicted in a different manner. In view of the fact that these signs also differ in the first letters ‘BRIDGE-‘ of the earlier signs, in the graphic arrangement of international trade mark registration No 1 105 946 and in the first letters ‘WATT-’ of the contested sign, they are deemed to be visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier European Union trade mark registration No. 13 316 161 and the contested sign coincide in the pronunciation of distinctive element ‘STONE’. However, they differ in the pronunciation of the additional letters ‘WATT’ of the contested sign. Therefore, these signs are deemed to be aurally similar to an average degree.

As regards the earlier European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946 designating the European Union, they share the letters ‘STONE’ with the contested sign. In view of the fact that these signs also differ in the pronunciation of the first letters ‘BRIDGE-‘ of the earlier marks and in the additional letters ‘WATT’ of the contested sign, they are deemed to be aurally similar to a low degree.

Conceptually, account must be taken on the fact that signs are conceptually identical or similar when the two signs are understood as meaning the same thing or something similar, respectively. In this case, the signs are conceptually similar to an average degree for English-speaking consumers to the extent that they share the concept of ‘stone’. The same part of the relevant public will perceive a conceptual dissimilarity between the signs with regard to the word ‘BRIDGE’ of the earlier mark and ‘WATT’ in the contested sign. For another part of the relevant public who does not speak English, the signs are not conceptually similar to the extent that the contested sign contains the meaningful word ‘WATT’. Finally, it cannot be excluded that a part of the relevant public will not perceive any meaning and therefore, for those consumers, a conceptual comparison does not influence the assessment of similarity of the signs.

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 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 did not explicitly claim that its European Union trade mark registration No 13 316 161 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 goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

According to the opponent, the earlier European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946 designating the European Union have a reputation in the European Union in connection with the goods and services on which the opposition has been based.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of, inter alia, the following documents:

 Annex 3: Witness statement signed in Tokyo, Japan, on 11/07/2018 by the opponent’s General Manager of Intellectual Property Department.

 Annex 4 (Exhibit MM1): Copy of Bridgestone Europe’s 2013 Corporate brochure, press articles relating to “air-free” bicycle tyres in English, Spanish, Finnish, German, Italian and Spanish.

 Annex 5 (Exhibit MM2): Website printouts taken from European magazine and news media containing brochures showing car, motorcycle, industrial and agricultural tyre ranges.

 Annex 6 (Exhibit MM3): European Union sales figures for ‘BRIDGESTONE’ tyre products’ for the period comprised between the years 2013 and 2016.

 Annex 7 (Exhibit MM3A): Market share data relating to all the European Union countries in relation to different types of tyres in years comprised between 2012 and 2017.

 Annex 8 (Exhibit MM4): Website printouts showing availability of BRIDGESTONE branded products, namely tyres, through third party distributors and retailers in the European Union, including Kwik Fit, Norauto and ATU.

 Annex 9 (Exhibit MM4A): Extract from an independent report on the European Automotive Aftercare Market commissioned by the European Automobile Manufacturers Association (ACEA) in 2011, in which no mention of ‘BRIDGESTONE’ is made together with extracts from the opponent’s website showing locations in the European Union where it is possible to purchase tyres.

 Annex 10 (Exhibit MM5): Information on Bridgestone affiliate company Bridgestone Licensing Services, LLC and Firestone brand.

 Annex 11 (Exhibit MM6): Information on Bridgestone affiliate company and brand Bridgestone Bandag.

 Annex 12 (Exhibit MM7): Information on Bridgestone affiliate company Bridgestone Cycle Co. Ltd and website printouts showing bicycle ranges.

 Annex 13 (Exhibit MM8): Pages containing data about the marketing and advertising expenditure figures for all the European countries for the years comprised between 2012 and 2017.

 Annex 14 (Exhibit MM9): Press articles from the European Union containing information about ‘BRIDGESTONE’ tyres.

 Annex 15 (Exhibit MM10): Press releases dated regarding Motor Shows in, inter alia, France and Germany, in the years 2014 and 2015 containing information about ‘BRIDGESTONE’ tyres.

 Annex 16 (Exhibit MM11): Impact studies prepared by independent Media agency called Road Transport Media which are designed to assess the impact of trade press advertising.

 Annex 17 (Exhibit MM12): Posters, advertisements and other promotional material directed at European Union customers containing information about ‘BRIDGESTONE’ tyres and also the depiction of the figurative sign .

 Annex 18 (Exhibit MM13): YouTube advertisements and information on sponsorship of the United Kingdom’s Channel Four television station’s Weather News.

 Annex 19 (Exhibit MM14): Website extracts showing official social media accounts and use of the BRIDGESTONE ‘hashtag’.

 Annex 20 (Exhibit MM15): Website printouts regarding Formula One sponsorship and association.

 Annex 21 (Exhibit MM16): Website printouts showing general sports sponsorships, including of the National Football League, FIS Alpine Ski World Cup and British Schoolboy Motorcycle Association.

 Annex 22 (Exhibit MM17): Website printouts showing Olympic Games association of the ‘BRIDGESTONE’ brand.

 Annex 23-24 (Exhibit MM18-19): Website printouts regarding collaboration with important European car producers.

 Annex 25 (Exhibit MM20): Website printouts regarding awards received in several countries of the European Union.

As already mentioned, the evidence submitted by the opponent has been listed only in the most general terms without divulging any such data.

The Court has given some guidance in respect of the evaluation of distinctiveness acquired through use of the earlier mark and provided a non-exhaustive list of factors:

In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking associations.

(22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

The evidence of enhanced distinctiveness acquired through use must refer to both (i) the relevant geographical area and (ii) the relevant goods and services. According to the evidence submitted, the Office must establish precisely for which goods and services distinctiveness has been acquired. The nature, factors, evidence and assessment of enhanced distinctiveness are the same as for reputation.

Having examined the material listed above, the Opposition Division concludes that the earlier trade marks have acquired a high degree of distinctiveness through their use on the market of the whole European Union.

However, this conclusion is not valid for all the goods covered by European Union trade mark registration No 3 574 274 and all the goods and services covered by international trade mark registration No 1 105 946 designating the European Union.

Where the earlier marks are registered for a wide range of goods and services targeting different kinds of public, it will be necessary to assess reputation separately for each category of goods and services. In such cases the earlier mark may not have a reputation for all of them, as it may not have been used at all for some of the goods, whereas for others it may not have reached the degree of knowledge necessary for the application of Article 8(5) EUTMR.

In the present case, the only goods for which consistent data have been furnished, in particular regarding the sales figures, the advertising expenditure and the market share are tyres in Class 12, including car tyres, trucks tyres and motorcycles tyres.

The evidence shows that the earlier marks enjoy a partial reputation, that is, the reputation only covers some of the goods for which it is registered. Consequently, it is only some of the goods in Class 12 that are considered to enjoy enhanced distinctiveness and will be taken into account for the purposes of the examination, namely the following: tyres covered by European Union trade mark registration No 3 574 274 and tyres for passenger cars; tyres for trucks/lorries; tyres for automobiles covered by international trade mark registration No 1 105 946 designating the European Union.

e) Global assessment, other arguments and conclusion

For reasons of procedural economy, the Opposition Division will firstly draw a conclusion from the perspective of the European Union trade mark registration No. 13 316 161. In this case, the goods covered by this earlier right and the goods and services covered by the contested application have been found partly identical and partly dissimilar. The signs are similar to an average degree both from a visual and aural perspective, and from a conceptual perspective, for a part of the public, the signs are similar to an average degree as well. The earlier mark ‘STONE’ is fully incorporated within the contested sign ‘WATTSTONE’.

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) and that 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).

Also, 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).

As the goods in Class 12 are identical and due to the absence of any dominant or non‑distinctive elements in the signs, a likelihood of confusion exists.

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 ‘WATT Stone’ as a sub-brand, a variation of the earlier mark ‘STONE’, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 316 161.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier European Union trade mark registration No 13 316 161.

The rest of the contested services in Class 35 are dissimilar to the goods covered by European Union trade mark registration No 13 316 161 but also to the goods and services covered by international trade mark registration No 1 105 946 designating the European Union and European Union trade mark registration No 3 574 274. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

Moreover, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing international trade mark registration No 1 105 946 designating the European Union and European Union trade mark registration No 3 574 274 in relation to dissimilar services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The Opposition Division will then examine the opposition insofar as it based on the opponent’s European Union trade mark registration No 3 574 274 and international trade mark registration No 1 105 946 designating the European Union under Article 8(5) EUTMR.

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.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark(s) has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

c) The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are visually and aurally similar to a low degree and conceptually similar to some extent.

In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

While the relevant section of the public for the goods and services covered by the conflicting marks overlaps to some extent, those goods and services are so different that the Opposition Division deems that later mark is unlikely to bring the earlier marks to the mind of the relevant public.

The goods for which the earlier marks enjoy reputation are tyres in Class 12 covered by European Union trade mark registration No 3 574 274 and tyres for passenger cars; tyres for trucks/lorries; tyres for automobiles in Class 12 covered by international trade mark registration No 1 105 946 designating the European Union.

The remaining services covered by the European Union trade mark application are the following:

Class 35: Import-export agencies; advertising; advertising by mail order; auctioneering; commercial information agencies; communication media (presentation of goods on -), for retail purposes; compilation of business information into computer databases; demonstration of goods; exhibitions (organization of -) for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; retail purposes (presentation of goods on communication media, for -).

These goods and services are radically dissimilar. Firstly, their nature is different. As regards the goods in Class 12, they are components of vehicle which by definition are replaceable goods. On the contrary, the services in Class 35 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, for instance create a personalised strategy for advertising them through newspapers, websites, videos, the Internet, etc.

Neither have these goods and services the same purpose. Furthermore, it can safely be excluded any degree of complementarity, since the goods in Class 12 have nothing to do with services in Class 35.

In addition, what makes not plausible that the public would be reminded of the earlier marks when purchasing the contested goods bearing the contested mark is the existence of extremely divergent distribution channels.

Also, as seen above, the degree of similarity between the signs has been found only low.

Therefore, taking into account and weighing up all the relevant factors of the present case, inter alia, the strong dissimilarity between the goods and services and the low degree of visual and aural similarity between the signs, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected also insofar as it based on this ground in relation to the following services:

Class 35: Import-export agencies; advertising; advertising by mail order; auctioneering; commercial information agencies; communication media (presentation of goods on -), for retail purposes; compilation of business information into computer databases; demonstration of goods; exhibitions (organization of -) for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; retail purposes (presentation of goods on communication media, for -).

For the sake of completeness, it must be noted that on this issue the opponent has not submitted any argument. In its observations of 19/07/2018 the opponent has only pointed out that the […] goods are for the most part unquestionably identical and highly similar […] without providing any line of arguments or observation whatsoever in regard to dissimilar goods.

As a rule, general allegations (such as merely citing the relevant EUTMR wording) of detriment or unfair advantage will not be sufficient in themselves for proving potential detriment or unfair advantage: the opponent must adduce evidence and/or develop a cogent line of argument to demonstrate specifically how, taking into account both marks, the goods and services in question and all the relevant circumstances, the alleged injury might occur. Merely showing the reputation and good image of the earlier marks, without further substantiation by way of evidence and/or reasoning is not sufficient (15/02/2012, R 2559/2010-1, GALLO / GALLO (fig.) et al., § 38-39, and the Court case-law cited therein).

The proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. When it is foreseeable that such injury would ensue from the use that might be made of the EUTM application, the proprietor of the earlier mark is not required to wait for it actually to occur in order to be able to prohibit registration of the EUTM application. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 38; 07/12/2010, T-59/08, Nimei La Perla Modern Classic, EU:T:2010:500, § 33; 29/03/2012, T-369/10, Beatle, EU:T:2012:177, § 61 (appeal dismissed in 14/05/2013, C-294/12 P, Beatle, EU:C:2013:300); 06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53; 25/01/2012, T-332/10, Viaguara, EU:T:2012:26, § 25).

Such a finding may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (judgments of 10/05/2007, T-47/06, Nasdaq, EU:T:2007:131, § 54, upheld on appeal (12/03/2009, C-320/07 P, Nasdaq, EU:C:2009:146); 16/04/2008, T-181/05, Citi, EU:T:2008:112, § 78; 14/11/2013, C-383/12 P, Répresentation d’une tête de loup, EU:C:2013:741, § 42-43).

The opponent did not demonstrate the existence of a special connection between the goods in Class 12 and the services in Class 35, which would allow for some of the qualities of the opponent’s goods to be attributed to the services of the applicant.

As already mentioned, in the present case, apart from claiming a reputation and arguing that the goods (but not the services) are identical or highly similar, that signs are similar and that consumers will establish a link between the trade marks because of the similarities between them, the opponent did not submit any additional facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark in particular as regards the specific services in Class 35 that have been found dissimilar.

The opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Article 7(2)(f) EUTMDR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

Therefore, a fortiori, the opposition is not well founded under 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María Clara IBÁÑEZ FIORILLO

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

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.