blue | Decision 2689498

Date Published: Sep 24, 2017

OPPOSITION No B 2 689 498

Blue Solutions, Odet, 29500 Ergue Gaberic, France (opponent), represented by Ernest Gutmann - Yves Plasseraud S.A.S., 3, rue Auber, 75009 Paris, France (professional representative)

a g a i n s t

Prime Technology, SS Monti Lepini km 50.500 (traversa S/N), 04100 Borgo San Michele, Italy (applicant)

On 21/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 689 498 is upheld for all the contested services, namely 

Class 37: Automobile lubrication; Lubrication of road vehicles; Vehicle maintenance; Motor vehicle maintenance; Vehicle maintenance and repair; Automobile repair and maintenance; Maintenance, servicing and repair of vehicles; Maintenance and repair of electric vehicles; Maintenance and repair of land vehicles; Motor vehicle maintenance and repair; Maintenance and repair of motor vehicle engines; Maintenance and repair of water vehicles; Rental of vehicle maintenance equipment.

2.        European Union trade mark application No 14 737 472 is rejected for all the contested services. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 737 472 , namely against all the  services in Class 37. The opposition is based on French trade mark registration No 14 4 080 272 .  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.

1. The  goods and services

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

Class 12: Apparatus for electric locomotion by land or water; electrically propelled land vehicles; spare parts for electrically propelled vehicles for locomotion by land, namely, bodywork parts, parts of motors and engines, brakes, shock absorbers; electrically powered cars, buses, lorries, boats and trams; electrically powered mopeds, electrically powered scooters; electric motors and transmission parts for electrically powered vehicles, vehicle sun visors.

Class 37: Maintenance, servicing and repair of electric vehicles, boats and trams; breakdown assistance for electric vehicles, boats, trams; information on vehicle maintenance; service stations [recharging electric batteries for vehicles, maintenance].

The contested services are the following:

Class 37: Automobile lubrication; Lubrication of road vehicles; Vehicle maintenance; Motor vehicle maintenance; Vehicle maintenance and repair; Automobile repair and maintenance; Maintenance, servicing and repair of vehicles; Maintenance and repair of electric vehicles; Maintenance and repair of land vehicles; Motor vehicle maintenance and repair; Maintenance and repair of motor vehicle engines; Maintenance and repair of water vehicles; Rental of vehicle maintenance equipment.

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 Maintenance and repair of electric vehicles are identically contained in both lists of services.

The contested Vehicle maintenance; Vehicle maintenance and repair; Maintenance, servicing and repair of vehicles include as a broader category the opponent’s Maintenance of electric vehicles. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested Automobile lubrication; Lubrication of road vehicles; Motor vehicle maintenance; Automobile repair and maintenance; Maintenance and repair of land vehicles; Motor vehicle maintenance and repair overlap with the opponent’s Maintenance, servicing and repair of electric vehicles. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested Maintenance and repair of water vehicles include as a broader category the opponent’s Maintenance, servicing and repair of boats. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested Maintenance and repair of motor vehicle engines; Rental of vehicle maintenance equipment are similar to the opponent’s Maintenance, servicing and repair of electric vehicles. They have a similar nature and purpose. Furthermore, they coincide in relevant public, distribution channel and commercial origin.

2. 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 services found to be identical and similar are directed at the public at large as well as 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, or terms and conditions of the purchased services.

3. The signs

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 element ‘blue’ included in both marks it is likely to be understood as ‘of the colour whose hue is that of the clear sky’ by the relevant public because is rather similar to the corresponding national word ‘bleu’. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

The figurative element of the drop of the contested sign and the graphic elements of the signs are decorative.  

The marks have no elements that could be considered clearly more dominant than other elements.

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).

Visually, the signs coincide in the element ‘blue’ that is depicted in blue, even if in a different shade, and in a rather similar stylisation. However, they differ in the remaining figurative elements of the contested sign.

Therefore, the signs are highly similar.

Aurally, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are similar to a high degree.

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

4. 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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The services are partly identical and partly similar.

The marks are visually and conceptually similar to a high degree and they are aurally identical. In particular, the marks coincide in the word ‘blue’ and they differ only in the figurative element of the contested sign and in the graphic elements of the marks.

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).

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).

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 14 4 080 272    It follows that the contested trade mark must be rejected for all the contested services.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Birgit FILTENBORG

Francesca CANGERI SERRANO

Erkki MÜNTER

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.