OPPOSITION No B 3 060 583

Continental Reifen Deutschland GmbH, Vahrenwalder Str. 9, 30165 Hannover, Germany (opponent), represented by Florian Schleifer, Vahrenwalder Str. 9, 30165 Hannover, Germany (employee representative)

a g a i n s t

Paalupaikka Oy, Kivirannantie 9, PL 19, FI-74101 Iisalmi, Finland (applicant), represented by Jonna Rossi, Volttikatu 10, FI-70700 Kuopio, Finland (employee representative).

On 03/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 583 is upheld for all the contested goods.

2. European Union trade mark application No 17 892 312 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 892 312 for the word mark ‘Kontio Motors’. The opposition is based on, inter alia, European Union trade mark registration No 12 095 519 for the word mark ‘CONTI’. 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.

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 12 095 519 because the other earlier right on which the opposition is based is not yet registered.

a) The goods

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

Class 12: Vehicles.

The contested goods are the following:

Class 12: Vehicles and conveyances.

Vehicles and conveyances are identically contained in both lists of goods, including synonyms, as conveyances is a synonym of vehicles.

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 the public at large and business customers with specific professional knowledge or expertise.

Business consumers are generally more observant than the average consumer. However, average consumers pay a higher degree of attention when purchasing goods in the upper-price segment. The vehicles and conveyances in question are also often technically complex, which means that consumers will obtain in-depth information about their modes of operation before making the purchase and pay more attention to the name of the producer. For instance, taking into consideration the price of cars, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, 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, personal needs or even prestige (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). Therefore, the degree of attention is high.

c) The signs and the distinctiveness of the earlier mark

CONTI	Kontio Motors
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements ‘CONTI’ and ‘Kontio’ are meaningful in certain languages of the relevant territory, ‘CONTI’ in Italian and Romanian and ‘Kontio’ in Finnish. Moreover, the letters ‘C’ and ‘K’ will be pronounced identically in both signs for a certain part of the relevant public such as the English-speaking part. Therefore, for reasons of procedural economy and simplification of the conceptual and aural comparisons of the signs, the Opposition Division finds it appropriate to focus the comparison on the English-speaking part of the public.

The sole element, ‘CONTI’, of the earlier mark, lacks any meaning for the relevant public. 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 has no meaning for any of the goods in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

As regards the contested sign, the element ‘Motors’ would be perceived as indicating a feature of the goods at issue, namely that they are operated by a motor. Therefore, this element is weak, if not non-distinctive, in relation to the goods at issue. Indeed, it indicates a characteristic of the goods at issue, that the vehicles and conveyances are motorised. The verbal element ‘Kontio’ lacks any meaning for the relevant public and is, therefore, distinctive.

Visually, the signs coincide in the string of letters ‘ONTI’, which are four out of the five letters of the earlier mark, and four out of the six letters of the first element of the contested sign. However, they differ in their first letters, the letter ‘C’ in the earlier sign, and letter ‘K’ in the contested sign, and in the additional letter ‘O’ at the end of the element ‘Kontio’. The signs also differ in the additional element, ‘Motors’, of the contested sign, which is weak, if not non-distinctive. Therefore, its impact on the comparison is significantly reduced. Taking into account the above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables /kon/ti/, present identically in both signs, as, for English speakers, the signs’ first letters, ‘C’ and ‘K’, followed by the letter ‘O’, will be pronounced identically. The pronunciation of the signs differs in the sound of the last letter, ‘O’, in the first element of the contested sign, and in the additional element, ‘Motors’, which is weak if not non-distinctive, and thus has a reduced impact on the comparison. Moreover, consumers generally tend to focus on the beginning of a sign 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. Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘Motors’ of the contested sign as explained above, the earlier mark has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. Furthermore, the impact of the only concept for the word ‘motors’ should not be overestimated due to its reduced impact on the consumer.

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

d) Global assessment, other arguments and conclusion

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 found to be identical target both the public at large and business consumers who will pay a high degree of attention. The signs are visually and aurally similar to an average degree, though conceptually they are not similar. The impact of the element ‘Motors’, due to its low (if not total) lack of distinctiveness, has a reduced impact on the visual, aural and conceptual comparisons, as well as on the overall impression of the sign. The earlier mark has a normal degree of distinctiveness.

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).

Therefore, as the goods are identical, and the main difference between the signs lies in a weak (if not non-distinctive) element of the contested sign, and as the signs are aurally similar to an average degree, a likelihood of confusion exists.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 095 519. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right No 12 095 519 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 right 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, 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Vita VORONECKAITE

Cindy BAREL

Alicia BLAYA ALGARRA

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.