OPPOSITION No B 3 109 045

Uniqaparts, S.L., C. Magdalena Corcoll, 11, 08750 Molins de Rei, Spain (opponent), represented by Ponti & Partners, S.L.P., C. Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Japanparts S.r.l., Via della Meccanica, 1/A, 37139 Verona, Fraz. Bassona (VR), Italy (applicant), represented by Mondial Marchi S.r.l., Via Olindo Malagodi, 1, 44042 Cento (FE), Italy (professional representative).

On 26/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 109 045 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

On 17/01/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 119 517 (figurative mark). The opposition is based on European Union trade mark registration No 18 026 586 (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.

a) The goods

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

Class 7: Machine tools and power-operated tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements, other than hand-operated hand tools; incubators for eggs; automatic vending machines; alternators for land vehicles; camshafts for vehicle engines; connecting rods for machines, motors and engines; spark plugs for vehicle engines; ignition wires for motor vehicles; belts for machines; belt drives; belts for motors and engines; dynamo belts; starters for motors and engines; pumps [parts of machines, engines or motors]; bearings [parts of machines]; cylinders for motors and engines; cylinders for machines; crank shafts; housings [parts of machines]; carburettors; cylinder heads for engines; dynamos; anti-pollution devices for motors and engines; jacks [machines]; sealing joints [parts of engines]; pistons [parts of machines or engines]; pulleys; anti-friction pads for machines; valves [parts of machines]; turbocompressors; industrial machinery for use in the automotive industry; machine wheelwork; dampers [parts of machines]; automobile motor igniting coil; sealing joints [parts of engines].

Class 9: Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; mechanisms for coin freed apparatus; cash registers, calculating devices; computers and computer peripherals; diving suits, divers’ masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; fire-extinguishing apparatus; global positioning system [GPS] apparatus; batteries for lighting; electric batteries for vehicles; starter cables for motors; chargers for electric batteries; rearview cameras for vehicles; rearview cameras for vehicles; gauges; converters, electric; signals, luminous or mechanical; reflective safety vests; computer applications for automotive control.

Class 12: Vehicles; apparatus for locomotion by land, air or water; parts, replacement parts and fittings for all of the aforesaid goods, included in this class.

The contested goods are the following:

Class 7: Cartridges for filtering machines; filtering machines; filters being parts of machines or engines; pumps [parts of machines, engines or motors]; pumps [machines]; pump diaphragms; lubricating pumps; alternators; regulators [parts of machines]; speed governors for machines, engines and motors; brushes [parts of machines]; dynamo brushes; glow plugs for diesel engines; trimming machines; starters for motors and engines; self-regulating fuel pumps; cylinders for motors and engines; pistons for engines; cylinder heads for engines; bearings for machines; injectors; pistons [parts of machines or engines]; radiators [cooling] for motors and engines; sparking plugs for internal combustion engines; anti-pollution devices for motors and engines; filters for cleaning cooling air, for engines; motors, other than for land vehicles; motors, electric, other than for land vehicles; timing belts for engines for land vehicles.

Class 9: Voltage regulators for vehicles; condensers [capacitors]; contacts, electric; batteries, electric; switchboxes [electricity]; electrical sockets; electrical outlets and plugs; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling of electricity; electric rectifiers; electromagnets; electric light switches; battery cut-offs.

Class 12: Treads for vehicles [roller belts]; safety belts for vehicle seats; brake facings for vehicles; pumps (air -) [vehicle accessories]; clutches for land vehicles; brake segments for vehicles; brakes for vehicles; cars; vehicles for locomotion by land, air, water or rail; motors for land vehicles; motors, electric, for land vehicles; engine mounts for land vehicles; pinions.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

For example, 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).

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 earlier mark’s verbal element ‘Quality’ is an English word which refers to the ‘standard of something as measured against other things of a similar kind; the degree of excellence of something’ (information extracted from Oxford English Dictionary on 16/03/2021 at https://www.lexico.com/definition/quality). It will also be understood by the part of the relevant public that has similar equivalent words in their languages such as ‘kvalita’ in Czech and Slovak, ‘qualité’ in French or ‘calidad’ in Spanish. Bearing in mind its laudatory character, this element is non-distinctive for the relevant goods for these parts of the public.

However, it is not excluded that for some other parts of the relevant public this element will be meaningless, and therefore, distinctive. Irrespective of any influence these various perceptions may have in terms of distinctiveness, this element is of secondary character because of its size, smaller than the other elements, and its depiction in light purple. Consequently, it has less impact than the other elements.

The figurative element of the earlier mark is a hexagonal device in shades of purple with thin white lines (creating the impression that the hexagonal device is made up of small triangles) and a thick black stroke at its bottom right. Since it is above the verbal element ‘Quality’ it will be perceived as the initial of this element, namely a stylised letter ‘Q’. Although the figurative element will be associated with the verbal element ‘Quality’, it has a certain degree of distinctiveness due to its fanciful stylisation.

The earlier mark’s verbal element ‘UNIQA’ has no meaning in relation to the relevant goods. Therefore, it is distinctive.

The earlier mark’s verbal element ‘PARTS’ is the plural form of an English word which means ‘an amount or section which, when combined with others, makes up the whole of something’ (information extracted from Oxford English Dictionary on 16/03/2021 at https://www.lexico.com/definition/part). This meaning will also be understood by other parts of the public such as those who speak Dutch or French, and by others due to its resemblance to corresponding words in their languages, such as ‘partes’ in Portuguese or Spanish. Taking into account the relevant goods, this element is at most weak, since it refers to the type and nature of these goods (e.g. dampers [parts of machines] in Class 7 or parts, replacement parts and fittings for all of the aforesaid goods (vehicles; apparatus for locomotion by land, air or water), included in this class in Class 12) or their parts the opponent may possibly offer.

The contested sign’s figurative element is an oval device in black, broken by two white horizontal lines, which may be perceived as the letter ‘O’ or as a fanciful device. Since it has no meaning as regards the relevant goods, it is distinctive.

The contested sign’s verbal expression ‘Quality Tested Automotive Spare Parts’ is composed of English words that indicate that the goods under the contested sign are excellence tested (quality tested) extra part(s) of a vehicle or machine kept for use in emergency or replacement (automotive spare parts). This expression will be understood by the part of the public that understands English. Therefore, for this part of the public, this expression is a clear reference to the characteristics of the relevant goods (and evocative of positive qualities) and, therefore, is considered non-distinctive.

For other parts of the public, some of the words will be associated with a meaning in relation to the relevant goods such as the words ‘Quality’ and ‘Parts’ as explained above and, therefore, will be considered as non-distinctive elements.

Moreover, it is not excluded that, for certain part(s) of the public, some of the words or this expression as a whole will be meaningless and, therefore, distinctive.

The elements ‘Q’ and ‘UNIQA PARTS’ in the earlier mark are the dominant elements as they are the most eye-catching.

The figurative element of the contested sign overshadows the verbal elements of the mark by virtue of its first position and size. The figurative element is the visually dominant element of the contested trade mark.

In the assessment of the visual and aural similarity of the marks it has to be borne in mind that 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 and from top to bottom, which makes the part placed at the left/top of the sign (the initial part) the one that first catches the attention of the reader. Importantly, in this case, one of the coinciding elements of the signs, namely the verbal element ‘Parts’ is found in the part of the marks of lesser impact.

Visually, the signs coincide in the verbal elements ‘Quality’ and ‘Parts’. The signs differ in the verbal elements ‘Q’ and ‘UNIQA’ of the earlier mark, and in the verbal expression ‘Tested Automotive Spare’ and the figurative element which may be perceived as a stylised letter ‘O’ of the contested sign, as well as in the stylisation of both signs.

Therefore, and taking into account the above assertions concerning the degree of distinctiveness and dominance of the signs’ elements, the signs are visually similar to a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the verbal elements ‛Quality’ and ‘Parts’, present identically in both signs. The pronunciation differs in the sound of the remaining verbal elements of the signs, namely the verbal elements ‘Q’ and ‘UNIQA’ of the earlier mark, and the verbal element ‘O’, if it is perceived as a letter and the verbal expression ‘Tested Automotive Spare’ of the contested sign.

Therefore, and taking into account the above assertions concerning the degree of distinctiveness of the signs’ elements, the signs are aurally similar to a very low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public for which the coinciding elements ‘Quality’ and ‘Parts’ have a meaning (including the part of the public that will perceive the abovementioned meaning of the whole contested sign), the signs are conceptually similar to a very low degree considering the non-distinctive/weakly distinctive character of these elements. For the part of the public for which these elements have no meaning, the signs are conceptually not similar.

As the signs have been found similar to a very low degree at least in two aspects 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.

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 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 non-distinctive and/or weak elements in the mark for some parts of the relevant public, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods are assumed to be identical and target the public at large and professionals whose degree of attention will vary from average to high. The earlier mark has a normal degree of distinctiveness.

The marks are visually and aurally similar to a very low degree, whereas they are conceptually similar to a very low degree for a part of the public and not conceptually similar for the remaining part of the public insofar as they coincide in the verbal elements ‘Quality’ and ‘Parts’. The remaining different verbal elements, colours, stylisation and graphic devices contribute to a very different overall impression produced by the signs. Their contrasting structure and appearance influence the effect of the differences between them. Those differences are clearly perceptible to the relevant consumers even displaying an average level of attention for the goods assumed to be identical, despite the statements of the opponent to the contrary, and because 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).

Therefore, although the signs coincide in two verbal elements, comparing the marks in overall terms and taking into account that the similarities between the signs concern either elements that are non-dominant (‘Quality’) or are have less impact (‘Parts’) within the overall impression given by the signs, the Opposition Division finds that there are sufficient differences between them to outweigh the abovementioned similarities.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. 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, 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

Andrea VALISA

Victoria DAFAUCE MENÉNDEZ

Martin MITURA

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.