BLUE DIAMOND | Decision 2679937
Date Published: Sep 22, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 679 937
Fendt-Caravan GmbH, Gewerbepark Ost 26, 86690 Mertingen, Germany (opponent),
represented by White & Case LLP, Valentinskamp 70 / Emporio, 20355 Hamburg,
Germany (professional representative)
a g a i n s t
Blue Diamond Products Limited, Unit 1 Brick Park Bretfield Court Bretton Street
Industrial Estate, Dewsbury West Yorkshire WF12 9BY, United Kingdom (holder),
represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax, West Yorkshire HX1
2HY, United Kingdom (professional representative).
On 04/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 679 937 is partially upheld, namely for the following
contested goods:
Class 12: Vehicles; apparatus for locomotion by land; trailer covers; canopies
for trailers; towing mirror covers and bags; hitch covers and bags;
parts and fittings for the aforesaid included in this class.
2. International registration No 1 254 944 is refused protection in respect of the
European Union for all of 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 international
registration designating the European Union No 1 254 944 ‘BLUE DIAMOND’ (word
mark), namely against all the goods in Class 12. The opposition is based on
European Union trade mark registration No 11 891 546 ‘Diamant’ (word 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.
Decision on Opposition No B 2 679 937 page: 2 of 6
a) The goods
The goods on which the opposition is based are the following:
Class 12: Motor homes, caravans, mobile homes and replacement parts and
fittings therefor.
The contested goods are the following:
Class 12: Vehicles; apparatus for locomotion by land, air or water; trailer covers;
canopies for trailers; towing mirror covers and bags; hitch covers and
bags; parts and fittings for the aforesaid included in this class.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR,
goods or services are not regarded as being similar or dissimilar to each other on the
ground that they appear in the same or different classes under the Nice
Classification.
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 vehicles; apparatus for locomotion by land include, as broader
categories, the opponent’s motor homes, caravans. Since the Opposition Division
cannot dissect ex officio the broad categories of the contested goods, they are
considered identical to the opponent’s goods.
The contested trailer covers; canopies for trailers; towing mirror covers and bags;
hitch covers and bags; parts and fittings for the aforesaid included in this class (and
parts and fittings for vehicles, apparatus for locomotion by land) overlap with the
opponent’s replacement parts and fittings therefor (of motor homes, caravans, mobile
homes). All the goods are parts, accessories and fittings of apparatus for locomotion
by land. Therefore, they are identical.
The contested apparatus for locomotion by air or water are apparatus for movement
on air or water, used for transportation of cargo and/or passengers. Although they
could be used for transportation of passengers, such as the opponent’s goods in
Class 12, this is not enough for a finding of similarity. The goods belong to different
industries and require different expertise and technologies. The same applies for the
contested parts and fittings for the aforesaid included in this class (of apparatus for
locomotion by air or water). These goods have different methods of use and do not
share the same manufacturer. They have different distribution channels and are not
sold in the same commercial outlets. Therefore, consumers would not expect them to
have the same commercial origin. It follows that these goods are dissimilar.
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
Decision on Opposition No B 2 679 937 page: 3 of 6
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 at business customers with specific professional knowledge or expertise, such
as car manufacturers and automobile mechanics. Some goods are also meant for the
average consumer, such as vehicles or their parts for repair or maintenance
purposes. The public’s degree of attention is considered to be above average, as
their price could also be high, they are in general infrequent purchases and the
goods are quite specialised.
c) The signs
Diamant BLUE DIAMOND
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.
In its observations, the holder focuses only on the German-speaking part of the
public. However, the element ‘Diamant’ is meaningful in other territories, for example,
in those countries where Danish, Dutch and Swedish are understood. Consequently,
the Opposition Division finds it appropriate to focus the comparison of the signs on
the Danish-, Dutch- and Swedish-speaking part of the public.
A basic understanding of English on the part of the general public in the
Scandinavian countries, the Netherlands and Finland must be regarded as a well-
known fact (see 26/11/2008, T-435/07, NEW LOOK, EU: T:2008:534, § 18, 23).
Consequently, the word ‘BLUE’, present at the beginning of the contested sign, will
be understood by the relevant public as an adjective meaning ‘of a colour
intermediate between green and violet, as of the sky or sea on a sunny day’
(information extracted from Oxford Living Dictionaries on 29/08/2017 at
https://en.oxforddictionaries.com/definition/blue). When considered individually, the
word ‘BLUE’ may be perceived as describing the colour of the goods at issue.
However, consumers normally perceive a mark as a whole and do not proceed to
analyse its various elements. Therefore, account should be taken of the fact that the
words ‘BLUE’ and ‘DIAMOND’ will be perceived as a logical and conceptual unit, in
Decision on Opposition No B 2 679 937 page: 4 of 6
which the adjective ‘BLUE’ qualifies the noun following it, namely ‘DIAMOND’. As a
result, the element ‘BLUE’ in the contested sign will be perceived as a secondary
element with less trade mark significance.
The element ‘Diamant’ of the earlier mark will be understood as ‘Diamond’ by the
relevant public. Neither of these verbal elements has any bearing on the relevant
goods and therefore they are distinctive.
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,
a diamond, and the additional word in the contested sign will be perceived as simply
qualifying its colour or otherwise denoting a specific type of diamond, the blue diamond,
the signs are conceptually similar to a high degree.
Visually and aurally, the signs coincide in the letters and the sequence of sounds
‘DIAM*N*’. However, they differ in the fifth and seventh letter and phoneme, ‘-A*T’ in
the earlier mark and ‘-O*D’ in the contested sign. Moreover, they differ in the verbal
element ‘BLUE’, placed at the beginning of the contested sign, which has no
counterpart in the earlier mark although, as outlined above, it will be perceived as
subordinate to the word ‘DIAMOND’. Therefore, the signs are visually and aurally
similar to an average degree.
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.
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.
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on
numerous elements and, in particular, on the recognition of the earlier mark on the
market, the association which can be made with the earlier mark, the degree of
similarity between the marks and between the goods or services identified (recital 8
of the EUTMR). It must be appreciated globally, taking into account all factors
relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case, the contested goods are partly identical and partly dissimilar to
the opponent’s goods and they target the general and professional public, whose
degree of attention is above average. Furthermore, the earlier mark has a normal
degree of distinctiveness.
Decision on Opposition No B 2 679 937 page: 5 of 6
Contrary to the holder’s argument, the marks under comparison are conceptually
highly similar and visually and aurally similar to an average degree.
It is likely that on being exposed to the use of both signs for identical goods,
consumers, even those who display a high degree of attention, will believe that they
originated from the same or economically linked undertakings. Indeed, 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, for example by adding the element ‘blue’
(23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Furthermore, 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, the Opposition Division finds that there is a likelihood of
confusion on the part of the Danish-, Dutch- and Swedish-speaking part of the public
and therefore the opposition is partly well founded on the basis of the opponent’s
European Union trade mark registration No 11 891 546. 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 to those of the earlier trade mark.
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.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 85(2)
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 only for part of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
Decision on Opposition No B 2 679 937 page: 6 of 6
The Opposition Division
Vanessa PAGE
Carlos MATEO PEREZ
Richard BIANCHI
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.