DGA | Decision 2737859
Date Published: Sep 28, 2017
OPPOSITION No B 2 737 859
Diputación General de Aragón, Edificio Pignatelli - Pº Mª Agustín, 36, 50004 Zaragoza, Spain (opponent), represented by Pilar Azagra Sáez, Las Damas 17, Pral. Centro, 50008 Zaragoza, Spain (professional representative)
a g a i n s t
DGA Comercio e Indústria Lda and Domingos Araújo, Rua do Bonjardim 1160, 4000-122 Porto, Portugal (applicants).
On 10/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 737 859 is upheld for all the contested goods.
2. European Union trade mark application No 15 018 757 is rejected in its entirety.
3. The applicants bear the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 018 757, namely against all the goods in Class 12. The opposition is based on Spanish trade mark registration No 1 144 782. The opponent invoked Article 8(1)(b) EUTMR. The opponent also invoked a well-known mark in the European Union pursuant to Article 8(1)(b) EUTMR in conjunction with Article 8(2)(c) 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 goods
The goods on which the opposition is based are the following:
Class 12: Vehicles; land, air and water conveyances and engines for land conveyances.
The contested goods are the following:
Class 12: Vehicles and conveyances.
Vehicles are identically contained in both lists of goods.
The contested conveyances include, as a broader category, the opponent’s land, air and water conveyances. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
- 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 are directed at the public at large or business customers with specific professional knowledge or expertise.
The degree of attention will be rather high on account of the specialised nature of the goods, the frequency of purchase and their price.
Taking into consideration the price of vehicles, 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).
- The signs
D.G.A. | |
Earlier trade mark | Contested sign |
The relevant territory is Spain.
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).
Both the earlier mark and the contested sign include three letters, ‘DGA’.
In the earlier mark, which is a word mark, each of the letters is followed by a dot which is of little importance in the overall impression of the mark.
In the contested figurative mark, ‘DGA’ is written in a slightly stylised typeface and incorporated into a blue and white figurative device. The figurative elements have a decorative function and will be, therefore, barely attributed trade mark significance.
The contested sign has no elements that could be considered more dominant (visually eye-catching) than other elements.
For part of the relevant public, ‘D.G.A.’ or ‘DGA’ will not be associated with any meaning; therefore, it will be distinctive. At the same time, part of the public, in particular the part living in or originating from the Spanish region of Aragón, will understand the letters, whether written with or without the dots, as an abbreviation referring to the Diputación General de Aragón, that is, the Regional Government of Aragón. For this part of the public, the above verbal elements, as they are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.
Visually, the signs coincide in the verbal element ‘DGA’, which also includes a dot after each letter in the earlier mark. They differ in the figurative device present in the contested sign, which has no counterpart in the earlier mark.
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).
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the phonemes /de-xe-a/. The punctuation marks do not affect the pronunciation. The figurative element of the contested sign will not be referred to aurally. Therefore, the signs are aurally identical.
Conceptually, for the part of the public that will not associate the letters with any concept, a conceptual comparison is not possible. As a consequence, the conceptual aspect does not influence the assessment of the similarity of the signs.
For the part of the public that will associate the letters with the meaning referred to above, the signs are conceptually identical.
With regard to the conceptual comparison, the figurative device depicted in the contested sign will not be associated with any concept in relation to the goods in question.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
As stated in section a) above, the goods are identical.
The signs are visually highly similar and aurally identical. While, with respect to part of the public, a conceptual comparison is not possible, for another part of the public the signs are conceptually identical. The similarities between the signs stem from the coinciding distinctive element, ‘DGA’. The differences between the signs are confined to the dot after each letter in the earlier mark and the purely decorative figurative elements in only the contested sign.
While the differences between the signs are not imperceptible, they are not sufficient to rule out any likelihood of confusion and, more specifically, the likelihood of association on the part of the relevant public, which, although it would be aware of differences between the signs, would nevertheless assume, owing to the signs’ similarities, that they stem from the same undertaking or economically linked undertakings.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
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.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely a well-known mark in the European Union pursuant to Article 8(1)(b) EUTMR in conjunction with Article 8(2)(c) EUTMR.
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 applicants are the losing party, they 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
Marzena MACIAK | Anna MAKOWSKA | Robert MULAC |
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.