DACO, GERMANY | Decision 2610197

Date Published: Oct 1, 2017

OPPOSITION No B 2 610 197

S.C. Automobile Dacia S.A., str. Uzinei nr. 1, Mioveni, jud. Arges, Romania (opponent), represented by Rominvent S.A., 35, Ermil Pangratti Str., 1st Floor, Sector 1, 011882 Bucharest, Romania (professional representative)

a g a i n s t

Firma Handlowa Rzepka Wojciech Rzepka, Centralna 55, 31586 Kraków, Poland (applicant), represented by Biuro Techniczno-Prawne Patent, ul. Bolesława Chrobrego 2A/1, 31-519 Kraków, Poland (professional representative).

On 25/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 610 197 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 808 101 . The opposition is based on Romanian trade mark registrations No 116 096 ‘DACIA’ (word) and No 55 497  as well as European Union trade mark registration No 6 848 816 . The opponent invoked Article 8(1)(b) EUTMR in relation to all of its marks and Article 8(5) EUMTR in relation to the two figurative marks.

SUBSTANTIATION of Romanian trade marks No 116 096 ‘DACIA’ and No 55 497 .

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier Romanian trade marks on which, inter alia, the opposition is based.

On 21/01/2016, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material (a document specifying details and means of substantiation was attached thereto). This time limit expired on 26/05/2016.

The opponent did not submit any evidence concerning the substantiation of the earlier Romanian trade marks.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

The examination of the opposition will proceed as far as it is based on European Union trade mark registration No 6 848 816 .

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:        Vehicles, apparatus for locomotion by land, in particular cars, bicycles, motor scooters, motorcycles, tricycles, spare parts and accessories for all the aforesaid goods.

Class 35:        Advertising; business management, assistance with the operation or management of an industrial or commercial company; consultancy regarding the management and organisation of sales areas; services of a franchiser, namely assistance with the operation and management of a commercial company, market studies.

Class 36:        Insurance, insurance information; financial affairs, banking affairs, financial and banking information, credit cards or debit cards, financing services, leasing, financing of motor vehicles, capital investment.

Class 37:        Information relating to the repair of vehicles, repair, preparation, tuning and maintenance of vehicles, installation and assembly of parts and accessories for vehicles, washing of vehicles, lubricating of vehicles, cleaning of vehicles; polishing of vehicles, anti-rust treatment for vehicles; vehicle repair; stations for the diagnosis, inspection and tuning of vehicles, overhauling (renovation) of vehicle components, engines for vehicles and motor vehicles; maintenance and repair of machines, retreading of tyres.

Class 39:        Rental of vehicles and vehicle accessories, vehicle breakdown assistance (towing), parking services; car transport; storage of motor vehicles; chauffeur services; packaging of goods; transport brokerage; distribution of products; rental of warehouses; information on transport, rental of garages; travel arrangement, towing.

The contested goods are the following:

Class 9:        Indicator lights, indicators, displays, counters, meters, gauges.

Class 12:        Spare parts, equipment and fittings for land vehicles; Bodies and bodywork parts; Motors and engines and parts therefor; Braking systems and parts therefor, chassis and parts therefor, steering systems and parts therefor, power trains and parts therefor, exhaust systems and parts therefor, power trains for liquid, gas or electric fuels and parts therefor; Travel safety systems and apparatus, and parts therefor; Vehicle suspension and parts therefor; Seats and parts therefor (including covers), children’s seats, anti-theft warning apparatus and alarms; Luggage carriers, safety belts, mirrors, reflectors, sun-blinds; Wheels, tyres, inner tubes, hub caps, anti-skid chains; Windscreen wipers and windscreen wiper blades; Direction signals, horns; Fuel bowsers; Elevating tailgates (parts of land vehicles).

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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.

Contested goods in Class 9

The contested indicator lights, indicators, displays, counters, meters, gauges are measuring and signalling devices that could be used for various purposes, including by car manufacturers and repairers in the process of making, maintaining or repairing a vehicle. There is a degree of similarity, albeit low, between the contested goods and the opponent’s goods in Class 12 spare parts and accessories for all the aforesaid goods [vehicles, apparatus for locomotion by land, in particular cars, bicycles, motor scooters, motorcycles, tricycles]. The goods under comparison can have the same specialised distribution channels and the same relevant public (vehicle manufacturers or repairers).

Contested goods in Class 12

The contested spare parts, equipment and fittings for land vehicles; bodies and bodywork parts; motors and engines and parts therefor; braking systems and parts therefor, chassis and parts therefor, steering systems and parts therefor, power trains and parts therefor, exhaust systems and parts therefor, power trains for liquid, gas or electric fuels and parts therefor; travel safety systems and apparatus, and parts therefor; vehicle suspension and parts therefor; seats and parts therefor (including covers), children’s seats, anti-theft warning apparatus and alarms; luggage carriers, safety belts, mirrors, reflectors, sun-blinds; wheels, tyres, inner tubes, hub caps, anti-skid chains; windscreen wipers and windscreen wiper blades; direction signals, horns; fuel bowsers; elevating tailgates (parts of land vehicles) are at least similar to the opponent’s spare parts and accessories for all the aforesaid goods [vehicles, apparatus for locomotion by land, in particular cars, bicycles, motor scooters, motorcycles, tricycles]. All the goods are parts, accessories and fittings of vehicles and they can coincide in their nature, purpose, method of use, distribution channels, usual origin and relevant public. Furthermore, some of the goods in conflict are identical, for example due to being included in both lists, albeit with synonymous wording (e.g. spare parts for land vehicles).

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.

The goods at issue are specialised goods mainly directed at business customers with specific professional knowledge or expertise in the automotive industry. Even if non-specialists were purchasing these goods, they would need either some in-depth knowledge on the technical characteristics of the goods and/or the advice of an expert, or they would pay careful attention that they were getting the right goods for the make and model of their car. Therefore, the degree of attention is considered high.

3. 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 consists of a sophisticated distinctive figurative element and a word, ‘DACIA’. Regardless of whether or not this word is associated with the meaning, i.e. that of the ancient region of Dacia (corresponding to a certain extent with the current territory of Romania), it is distinctive as consumers would not assume that the relevant goods (e.g. motors or other vehicle parts) could originate from that ancient region. Both the figurative element and the word element equally attract the attention of the consumer and neither element dominates the other.

The contested mark contains a large, visually outstanding, meaningless and therefore distinctive verbal element, ‘DACO’, a non-distinctive and visually secondary element, ‘Germany’ (which is understood throughout the relevant territory and is descriptive of the geographical origin of the goods), and figurative elements, namely a non-distinctive background of common shape and colour and a distinctive three-colour abstract figurative element alongside the word ‘DACO’.

Visually, the signs coincide in three letters of their verbal elements, namely ‘DAC’, but differ in all their remaining elements. The letters after the coinciding ones are different and the marks, due to their distinctive figurative elements, create fairly distinct visual impressions. Although the marks coincide in three letters, the verbal elements ‘DACIA’ and ‘DACO’ are relatively short and the difference in the additional letters, ‘IA’ and ‘O’, is instantly noticeable. Even the elements that are not distinctive, such as the black background and the element ‘Germany’ in the contested mark, contribute to the creation of overall visual impressions that the signs have more differences than similarities.

Therefore, the signs are visually similar to a 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 first syllable, ‘DA’. However, depending on the different pronunciation rules in different parts of the relevant territory, the signs do not coincide in any other element (e.g. for the English-speaking part of the public) or in the sound of the next letter, ‘C’ (e.g. for the Lithuanian-speaking part of the public). Furthermore, while according to the phonetic rules of some languages of the EU both marks would be pronounced as two syllables, for another part of the public the signs differ in the number of syllables, namely two in the case of the contested sign and three in the case of the earlier mark. The element ‘Germany’ of the contested sign is unlikely to be pronounced, as it is both non-distinctive and visually secondary.

Therefore, depending on the part of the public and the phonetic rules of the relevant language, the signs are aurally similar to a degree that varies between average (e.g. for the Lithuanian-speaking part of the public) and low (e.g. for the English-speaking part of the public).

Conceptually, for the part of the public that sees no meaning in the elements ‘DACIA’ and ‘DACO’, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs. The non-distinctive indication of the geographical origin of the goods (the word ‘Germany’) would have no impact on the perception of this part of the public.

For another part of the public, namely the part that associates the word ‘Dacia’ with an ancient region corresponding approximately to the current territory of Romania, the signs would be conceptually dissimilar. This is because, although the word ‘Germany’ in the contested sign is entirely non-distinctive, there is a clear distinction between the concepts of the ancient region (Dacia) and of the present-day country (Germany) and these territories are mutually exclusive.

Neither party argued (or submitted any evidence) that the words ‘DACIA’ and ‘DACO’ are conceptually similar in any language in the relevant territory. Therefore, in the absence of any arguments or evidence in this regard, the Opposition Division concludes that the signs are conceptually either not comparable or dissimilar, as explained above.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim within the substantiation period. In its submissions, the opponent argued that its company and the mark ‘Dacia’ are famous; however, these statements were not accompanied by any documents from which the Opposition Division could ascertain the correctness of such claims and the extent to which the mark has allegedly acquired reputation. Only after the period of substantiation did the opponent submit evidence to support the arguments about the fame of the earlier mark. However, they cannot be taken into account, as they were submitted late (i.e. after the time limit for substantiation had expired).

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.

5. Global assessment, other arguments and conclusion

To summarise, the goods under comparison range from being similar to a low degree to being identical, and the signs are visually similar to a low degree, aurally similar to an average to low degree and conceptually either dissimilar or not comparable. Considering the nature and frequency of the purchase of the goods (not frequent), as well as the need to ensure that the piece or accessory fits the correct vehicle, the degree of attention is high. Despite arguing for the enhanced distinctiveness of the earlier mark, the opponent failed to prove this and, therefore, the distinctiveness of the earlier mark is average.

After taking account of all the abovementioned factors, the Opposition Division considers that the likelihood of confusion between the marks can be safely excluded. The low visual similarity, the aural similarity that varies from average to low, the lack of any conceptual link and the high degree of attention outweigh the other factors, such as the identity between some of the goods (e.g. spare parts of land vehicles) and would allow the average consumer of the relevant goods to safely distinguish the conflicting signs.

Admittedly, when signs consist of both figurative and verbal elements, the latter have a stronger impact on the consumer and are more likely to be remembered. However, the verbal elements ‘DACIA’ and ‘DACO’ cannot be taken in isolation or dissected into strings of letters and the overall impressions of the signs differ sufficiently. Furthermore, even the words ‘DACIA’ and ‘DACO’ themselves have sufficient differences not to be confused or associated. The words are relatively short and the likelihood of confusion or association is clearly non-existent for the part of the public that perceives the concept in the earlier mark (the marks are then conceptually dissimilar). However, the Opposition Division considers that even the part of the public that does not know the meaning of ‘Dacia’ would be able to safely distinguish the marks due to their distinct figurative elements and the differences in the word elements. The fact that for a part of the public the signs could be aurally similar to an average degree is not a strong basis for likelihood of confusion as, considering the nature of the goods at issue and the degree of attention of the public, it is unlikely that consumers would rely solely on the aural perception of the signs.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous case referred to by the opponent is not relevant to the present proceedings. This is because the marks in conflict (‘DACIA’ versus ‘DANYA’) were found to have a closer resemblance, namely the same number of letters and syllables, and the difference appears in the middle of the verbal elements and is surrounded by identical letters; furthermore, the relevant goods and the public were different from those in the present case.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(b) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claimed that its European Union trade mark No 6 848 816 has a reputation in the European Union and invoked Article 8(5) EUTMR, according to which, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark mentioned above.

On 21/01/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 26/05/2016.

The opponent submitted the evidence of reputation on 05/12/2016, that is, after the expiry of the abovementioned time limit.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Given that the abovementioned evidence cannot be taken into account for the reason stated above, the opponent failed to establish that the abovementioned trade mark on which the opposition is based has a reputation.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded also in respect of this ground invoked.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) 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

Martin MITURA

Vita VORONECKAITE

Ric WASLEY

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.