OPPOSITION No B 3 102 686

Toyo Tire Corporation, 2-2-13 Fujinoki, Itami-shi, 664-0847 Hyogo, Japan (opponent), represented by Staeger & Sperling Partg mbB, Sonnenstr. 19, 80331 München, Germany (professional representative)

a g a i n s t

Hebei Kunda Hoisting Equipment Co., Ltd., Zhang Village, Shimenqiao Town, Renqiu Hebei, People’s Republic of China (applicant), represented by Ingenias, Av. Diagonal 514 – 1º, 08006 Barcelona, Spain (professional representative).

On 13/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 102 686 is partially upheld, namely for the following contested goods:

Class 12: Trailers [vehicles]; motorcycles; wheels for motorcycles; electric vehicles; tires for vehicle wheels; vehicles for locomotion by land or rail.

2. European Union trade mark application No 18 093 208 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 093 208 , namely against all the goods in Class 12. The opposition is based on international trade mark registrations No 930 354 and No 960 464 , both designating the European Union. The opponent invoked Article 8(1)(a) and (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 international trade mark registration No 960 464 designating the European Union.

a) The goods

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

Class 12: Tires (for automobiles); inner tubes (for automobiles); automobiles and their parts and fittings; shock absorbers (for land vehicles); springs (for land vehicles); machine elements for land vehicles; railway rolling stock and their parts and fittings.

The contested goods are the following:

Class 12: Tilt trucks; trolleys; trailers [vehicles]; handling carts; motorcycles; wheels for motorcycles; electric vehicles; tires for vehicle wheels; vehicles for locomotion by land, air, water or rail; lifting cars [lift cars]; saddle covers for bicycles or motorcycles; pallet transfer trucks.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested tires for vehicle wheels include, as a broader category the opponent’s tires (for automobiles). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested electric vehicles; vehicles for locomotion by land overlap with the opponent’s automobiles. Therefore, they are identical.

The contested vehicles for locomotion by rail overlap with the opponent’s railway rolling stock. Therefore, they are identical.

The contested trailers [vehicles] are similar to the opponent’s shock absorbers (for land vehicles); springs (for land vehicles). They can coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested motorcycles are similar to the opponent’s automobiles as they have the same purpose and nature. Moreover, they usually coincide in their relevant public.

The contested wheels for motorcycles have a low degree of similarity with the opponent’s tires (for automobiles) as they can coincide in producers and distribution channels.

The contested tilt trucks; trolleys; handling carts; lifting cars [lift cars]; pallet transfer trucks are different land vehicles used for handling, moving and lifting materials from the ground. They are not similar to the opponent’s goods since they have a different intended purpose and method of use. Furthermore, they differ in distribution channels and relevant public and neither are they complementary nor in competition. Therefore, they are dissimilar.

The contested vehicles for locomotion by air and water have nothing in common with the opponent’s goods in Class 12, as they are manufactured by different producers and are supplied through different distribution channels. This is because they are vehicles for travelling in different environments, namely by land (in the case of the opponent’s goods) or by air or water (in the case of the contested goods), and parts and fittings. Consequently, these goods target different consumers and are neither in competition nor complementary. Therefore, they must be considered dissimilar.

The contested saddle covers for bicycles or motorcycles are dissimilar to all the opponent’s goods. Although the end consumers or the distribution channels could coincide, this is insufficient to justify a finding of similarity. They have different natures, purposes and are usually produced by different companies. They are neither in competition nor complementary.

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 to varying degrees are directed at both average consumers (e.g. motorcycles) and professionals (e.g. railway rolling stock). The degree of attention will vary from average to high, depending on the characteristics of the goods. A higher than average degree of attention is expected when the goods are, for instance, expensive, such as automobiles, or target experts who have the professional knowledge to use them, for instance shock absorbers (for land vehicles).

c) The signs

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common verbal element ‘TOYO’ has no meaning for the relevant public and is, therefore, distinctive.

However, the additional term ‘TIRES’ of the earlier mark will be understood by part of the relevant public, namely the English-speaking part of the public, as the hoop that covers a wheel of a car, bicycle or other vehicle. Consequently, the Opposition Division finds it appropriate to focus on this part of the public since this is the best light in which the opposition can be examined as for them the term is non-distinctive for the relevant goods.

Both signs are figurative with a purely decorative stylisation of the verbal elements (a slightly stylised black font).

Visually and aurally, the signs coincide in the word/sound ‘TOYO’, and differ in the additional word/sound ‘TIRES’ in the earlier mark. The signs also differ slightly in their typeface.

Therefore, and taking into account the conclusions regarding the distinctiveness and the impact of the elements, the signs are visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the additional verbal element ‘TIRES’ of the earlier mark is non-distinctive, it does not play any role at a conceptual level. Therefore, the conceptual aspect does not influence the assessment of the 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 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’).

The opponent further claimed that ‘the use without due cause of the contested mark would also take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier marks’. This claim was made within the observations, that is outside of the opposition period, and no evidence or additional arguments were submitted. Therefore, the Office cannot examine its claims under Article 8(5) EUTMR even though it also refers to the reputation of its marks.

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 non‑distinctive element, as stated above in section c) of this decision.

e) 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).

The goods are partly identical, partly similar to varying degrees and partly dissimilar. They target the public at large as well as the professional public, with a degree of attention ranging from average to high. The earlier mark is distinctive to an average degree.

The signs are visually and aurally similar to a high degree on account of their coinciding verbal element ‘TOYO’, which is the most distinctive verbal element of the earlier mark and the sole verbal element of the contested sign. The differences between the signs are confined to non‑distinctive or secondary elements and aspects that will have less impact on consumers. These differences are insufficient for the public to safely differentiate between them. Furthermore, the conceptual aspect has no impact on the assessment.

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. It is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, 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). In the present case, as the contested sign is included in its entirety in the earlier mark, it is likely that consumers will perceive the contested sign as a new version of the earlier mark even for goods that are similar only to a low degree.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 960 464 designating the European Union. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark. This is also valid for the goods similar only to a low degree given the relevant similarities between the signs.

The rest of the contested goods are dissimilar. 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 goods cannot be successful.

Since the opposition is partially 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 and reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, 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 opponent has also based its opposition on the international trade mark registration No 930 354 designating the European Union.

This earlier right invoked by the opponent covers a narrower scope of goods than the international trade mark registration No 960 464 designating the European Union which has been compared. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Cristina SENERIO LLOVET

Sofia SACRISTAN MARTINEZ

Maria SLAVOVA

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.