OPPOSITION Nо B 3 047 008

 

AUTOMOBILE CLUB DE L'OUEST, ACO (Association sans but lucratif régie par la loi de 1901), Circuit des 24 Heures, 19X, 72040 Le Mans, France (opponent), represented by Lambert & Associés, 18, avenue de l'Opera, 75001 Paris, France (professional representative) 

 

a g a i n s t

 

CLAAS KGaA mbH, Mühlenwinkel 1, 33428 Harsewinkel, Germany (applicant).

On 03/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 047 008 is upheld for all the contested goods.

 

2.	European Union trade mark application No 17 390 311 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 of European Union trade mark application No 17 390 311 Tractor "Le Mans" (word mark). The opposition is based on, inter alia,  French trade mark registration  No 4 357 013, (figurative mark). The opponent invoked  Article 8(1)(b) EUTMR, Article 8(4) EUTMR and Article 8(5) 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.

 

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 French trade mark registration  No 4 357 013.

 

a) The goods

 

The opposition is based on, inter alia, the following  goods :

 

Class 12: Vehicles; apparatus for locomotion by land, air or water; motors and engines for land vehicles; suspension shock absorbers for vehicles; vehicle bodies; anti-skid chains; vehicle chassis or bumpers; sun-blinds adapted for automobiles; safety belts for vehicle seats; electric vehicles; caravans; tractors; mopeds; cycles; frames, kickstands, brakes, handlebars, wheel rims, pedals, tires, wheels or saddles for cycles or bicycles; strollers; handling carts; inner tubes for pneumatic tires; anti-glare devices for vehicles; anti-theft devices for vehicles; headrests for vehicle seats; automobile hoods; automobile bodies; anti-theft alarms for vehicles; reversing alarms for vehicles; inner tubes for bicycles; gear boxes for land vehicles; caps for vehicle petrol [gas] tanks; hoods for vehicles; sleeping berths for vehicles; direction signals for vehicles; electric motors for land vehicles; safety seats for children, for vehicles; hub caps; windshield wipers; luggage nets for vehicles; golf carts; security harness for vehicle seats; vehicle covers [shaped]; seat covers for vehicles; covers for vehicle steering wheels; motors and engines for land vehicles; treads for retreading tires; air pumps (vehicle accessories); trailer hitches for vehicles; rearview mirrors; vehicle wheels; repair outfits for inner tubes; tires for vehicle wheels; remote-controlled vehicles other than toys; steering wheels for vehicles, luggage carriers for vehicles, cigarette lighters for vehicles. 

The contested goods are the following:

 

Class 12: Tractors, and components and parts therefor, included in class 12.

 

Tractors are identically contained in both lists of goods.

The contested  components and parts therefor, included in class 12  include, as a broader category, or overlap with, the opponent’s  gear boxes for land vehicles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.Therefore, they are identical.

 

 

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 are directed at business customers with specific professional knowledge or expertise, namely customers working in the agricultural sector. Taking into consideration the price of tractors, these consumers are likely to pay a high degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a tractor, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs and personal needs (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T‑63/09, Swift GTi, EU:T:2012:137, § 39-42).

c) The signs

 

	Tractor "Le Mans"
Earlier trade mark	Contested sign

 

The relevant territory is France.

 

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 mark contains the verbal elements ‘ASIAN’ and ‘LE MANS’, both spelled in uppercase letters, and a figurative element on the right upper side resembling waves or a waving flag.

The element ‘Le Mans’ refers to the name of the French town ‘Le Mans’. The element bears no relationship to the goods at issue, tractors, and is thus distinctive to an average degree. The applicant argues that the element ‘Le Mans’ is an ‘un-protectable part’ in both marks but does not give any coherent reasoning or evidence to support this allegation. If the applicant meant that ‘Le Mans’ is a geographical indication and descriptive for this reason it did not show that ‘Le Mans’ is associated with the goods at issue or that this can at least be reasonably assumed. However, the town ‘Le Mans’ has no publicly known connection to tractors. This argument must therefore be set aside.

The element ‘ASIAN’ is an adjective of the English language expressing that someone or something belongs to or is related to Asia or its people. The equivalent term for ‘Asia’ in the French language is the visually and aurally highly similar term ‘Asie’ which means the relevant public will perceive the meaning of the English word ‘Asian’ as a qualifying adjective referring to the fact that the goods at issue are for the Asian market or have been manufactured in Asia. Consequently, the element ‘ASIAN’ is non-distinctive.

The stylisation of the verbal element in the earlier mark will be perceived by the relevant public as performing an essentially decorative function as the stylisation is very moderate for both verbal elements and will be perceived as an ordinary graphical means of bringing the verbal element to the attention of the public.

The figurative element is a rather basic geometric element. The public is used to perceiving such depictions as ornamentation. In any case, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Thus, while it is not negligible due to its size, the figurative element only has a low distinctiveness.

The contested sign is a verbal mark consisting of the two elements ‘Tractor’ and ‘Le Mans’. The element ‘Tractor’ will be understood by the public in the relevant territory as it is almost identical to the equivalent French word “tracteur”, .i. e. a motorised vehicle for the traction of non-motorised vehicles (information extracted from Larousse Dictionary at https://www.larousse.fr/dictionnaires/francais/tracteur/78890?q=tracteur#77940 on 27/11/2020: ‘véhicule motorisé destiné à la traction de véhicules sans moteur’). The element thus describes the goods at issue, tractors and their parts, and is consequently exclusively descriptive and lacks any distinctiveness. The quotation marks around the element ‘Le Mans’ are decorative and of rather low distinctiveness. Nonetheless, in the present case, they contribute to drawing the relevant public’s attention to the element ‘Le Mans’.

As mentioned above, the element ‘Le Mans’ refers to the name of the French town ‘Le Mans’. It is distinctive to an average degree in the contested sign, too.

The element ‘Le Mans’ in the earlier mark is the dominant element as it is the most eye-catching.

 

Visually, the signs coincide in the term ‘Le Mans’, which is the dominant element in the earlier mark and is the most distinctive element in both the earlier mark and the contested sign for the reasons set out above. Furthermore, the stylisation of the verbal elements in the earlier mark will have little impact on consumers as also explained above and while the signs also differ in the additional word ‘ASIAN’ and the figurative element of the earlier mark as well as the element ‘Tractor’ in the contested sign, these elements have little or no distinctiveness, and are thus elements to which consumers will pay less attention.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the term ‛Le Mans’, present identically in both signs. As regards the additional word ‛Tractor’ in the contested sign, bearing in mind that it is non-distinctive, consumers are unlikely to pronounce this word when referring to the contested sign. In a similar manner, the term ‘ASIAN’, which has no distinctiveness, as explained above, will not attract the relevant consumers’ attention. Therefore, the signs will be aurally highly similar, at least for a significant part of the public. In any event, even if the additional word ‛Tractor’ is pronounced, it would not create any remarkable difference between the signs since it is exclusively descriptive and thus completely non-distinctive. Moreover, the signs both consist of four syllables respectively and they have a similar rhythm and intonation.

 

Therefore, the signs are aurally highly similar.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.  The public in the relevant territory will perceive in both signs the name of the French town ‘Le Mans’. The town is well known for its car racing circuit and a part of the public might also associate it with this concept. In both cases the element is distinctive. And although the element ‘Tractor’ in the contested sign will evoke a concept, it is not sufficient to conceptually distinguish the signs, as this element is non-distinctive and cannot indicate the commercial origin. The same applies to the element ‘ASIAN’ in the earlier mark, which is non-distinctive and thus equally unsuited to distinguish the signs conceptually. Furthermore, the figurative element and the stylization of the verbal elements in the earlier mark will not convey any particular conceptual content to consumers and will therefore not be perceived as a conceptual difference between the signs Consequently, the attention of the relevant public will be attracted by the fanciful terms ‘Le Mans’.

In view of the above, it is considered that the signs are conceptually highly similar.

 

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 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

  

The signs are visually, aurally and conceptually highly similar while the goods are identical. The latter are directed at business customers who pay a high degree of attention. The earlier mark is of average distinctiveness.

The signs coincide in the verbal elements ‘Le Mans’. The differing verbal elements lack distinctiveness (‘ASIAN’, ‘Tractor’) and will not prevent the public from associating both signs with the concept of the French town ‘Le Mans’.

As far as the figurative element of the earlier mark is concerned, the principle has been established that, when signs show both word and figurative elements, the verbal element of a sign usually has a stronger impact on consumers than the figurative element. This is because the public does not tend to analyse them and will most readily refer to them by their verbal element. It is therefore relevant, in the present case, that the coincidence is in the verbal elements of the signs.

 

In sum, there is a likelihood of confusion because the differences between the signs are confined to non-distinctive or secondary elements and aspects.

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).

 

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  French trade mark registration No 4 357 013. It follows that the contested trade mark must be rejected for all the contested goods.

 

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to  its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Moreover, It is not necessary either to consider the opponent’s argument that the earlier marks, all characterised by the presence of the same word component, ‘Le Mans’, constitute a ‘family of marks’ or ‘marks in a series’. Again, the result would be the same even if the earlier mark  was part of such a family of marks.

 

As the earlier French national trade mark registration  No 4 357 013 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

The opposition is based on, inter alia,  French trade mark registration  No 4 357 013, (figurative mark) in relation to which the opponent invoked Article 8(1)(b) EUTMR. The grounds of Article 8(4) and (5) EUTMR were also invoked as basis for the opposition with regard to other earlier rights.

 

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(b) in connection with Article 8(2)(c) and Article 8(4) and (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, 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

 

 

Catherine MEDINA

Christian STEUDTNER

Holger KUNZ

 

 

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.