DIGITAL EAGLE | Decision 2756669

Date Published: Sep 24, 2017

OPPOSITION No B 2 756 669

The Goodyear Tire & Rubber Company, 200 Innovation Way, Akron, Ohio 44316-0001, United States of America (opponent), represented by Potter Clarkson LLP, The Belgrave Centre, Talbot Street, Nottingham  NG1 5GG, United Kingdom (professional representative)

a g a i n s t

Jiangsu Digital Eagle Technology Development Co., Ltd., Room 411, Building A1, No.999 East Gaolang Road, Wuxi, The People's Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 756 669 is partially upheld, namely for the following contested goods:

Class 12:  Vehicles for locomotion by land, air or rail; remote control vehicles, other than toys; electric vehicles; bicycles; aerial conveyors; two-wheeled trolleys; tyres for vehicle wheels; amphibious airplanes; aeronautical apparatus, machines and appliances.

2.        European Union trade mark application No 15 422 645 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 422 645 for the figurative mark ‘’. The opposition is based on the following earlier marks:

1. United Kingdom trade mark registration No 760 654 for the word mark ‘EAGLE’,

2. United Kingdom trade mark registration No 2 129 480 for the figurative mark
   ‘’,

3. German trade mark registration No 1 058 024 for the word mark ‘EAGLE’,

4. Spanish trade mark registration No M 1 806 170 for the word mark ‘EAGLE’,

5. Italian trade mark registration No 0000720333, for the word mark ‘EAGLE’,

6. Portuguese trade mark registration No 000273813, for the word mark ‘EAGLE’,

7. Polish trade mark registration No R.072743 for the word mark ‘EAGLE’,

8. Swedish trade mark registration No 193 379 for the word mark ‘EAGLE’,

9. Austrian trade mark registration No 104 284 for the word mark ‘EAGLE’,

10. Danish trade mark registration No 1984 1510 for the word mark ‘EAGLE’,

11. Greek trade mark registration No F75148 for the word mark ‘EAGLE’,

12. Finnish trade mark registration No 91 844 for the word mark ‘EAGLE’,

13. Bulgarian trade mark registration No 00022196 for the word mark ‘Eagle’,

14. Irish trade mark registration No 110 980 for the word mark ‘EAGLE’,

15. Lithuanian trade mark registration No 28 133 for the word mark ‘EAGLE’,

16. Latvian trade mark registration No M 37 071 for the word mark ‘EAGLE’,

17. Cypriot trade mark registration No 68 091 for the word mark ‘EAGLE’,

18. Estonian trade mark registration No 21 063 for the word mark ‘EAGLE’,

19. Benelux trade mark registration No 039 009 for the word mark ‘EAGLE’.

In relation to the above mentioned earlier marks the opponent invoked Article 8(1)(b) and 8(5) EUTMR.

The opposition is also based on earlier non-registered trade marks ‘EAGLE’ used in the course of trade in the United Kingdom, Ireland and Cyprus. In relation to these earlier non-registered trade marks the opponent invoked Article 8(4) EUTMR.

ADMISSIBILITY

On 03/03/2017, together with other evidence filed to substantiate its earlier marks, the opponent attached an extract from the database of the State Intellectual Property Office of the Republic of Croatia concerning trade mark registration No Ž950761.

However, the earlier rights on which an opposition is based can only be invoked during the three-month opposition period, which expired on 22/08/2016 (the first working day after three months from the publication of the contested EUTM application).

However, the opposition notice, filed on 22/08/2016, was not based on this trade mark. No additional documents were filed together with the notice of opposition or within the opposition period.

The opposition must therefore, be rejected as inadmissible, as far as it is based on this earlier trade mark.

SUBSTANTIATION

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.

a) Austrian trade mark registration No 104 284, Greek trade mark registration No F75148 and Cypriot trade mark registration No 68 091.

In the present case the notice of opposition was not accompanied by any evidence as regards the above mentioned earlier trade marks on which the opposition is based.

On 29/08/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was extended and expired on 03/03/2017.

On 03/03/2017, the opponent filed the evidence for part of the earlier trade mark registrations. However, the opponent did not submit any evidence concerning the substantiation of the earlier Austrian trade mark registration No 104 284, Greek trade mark registration No F75148 and Cypriot trade mark registration No 68 091.

b) Italian trade mark registration No 0000720333 and Portuguese trade mark registration No 273 813.

The extracts from databases filed to substantiate the opponent’s earlier Italian trade mark registration No 0000720333 and Portuguese trade mark registration No 273 813 are not sufficient because they do not contain all the necessary elements. The lists of goods for which these earlier trade marks are registered are missing. The extract from the database concerning earlier Portuguese trade mark registration contains merely an indication of the class number. The extract from the database concerning earlier Italian trade mark contains a description that mentions that the sign is registered for the whole Class 12. The opponent should have submitted additional documents from official sources showing the lists of goods for which these marks are protected.

c) Swedish trade mark registration No 193 379, Lithuanian trade mark registration No 28 133, Latvian trade mark registration No M 37 071 and Finnish trade mark registration No 91 844.

The electronic images of extracts from online databases filed to substantiate the opponent’s earlier Swedish trade mark registration No 193 379, Lithuanian trade mark registration No 28 133, Latvian trade mark registration No M 37 071 and Finnish trade mark registration No 91 844 are not sufficient because they do not contain official identifications of the authorities or databases from which they originate.

Conclusion

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.

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 760 654.

1. The goods

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

Class 12: Vehicle tyres.

The contested goods are the following:

Class 12: Vehicles for locomotion by land, air, water or rail; remote control vehicles, other than toys; electric vehicles; bicycles; aerial conveyors; two-wheeled trolleys; sleighs [vehicles]; tyres for vehicle wheels; amphibious airplanes; aeronautical apparatus, machines and appliances.

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 tyres for vehicle wheels are identical to the opponent’s vehicle tyres, although worded differently.

The contested vehicles for locomotion by land, air or rail; remote control vehicles, other than toys; electric vehicles; bicycles; aerial conveyors; two-wheeled trolleys; amphibious airplanes; aeronautical apparatus, machines and appliances may all use tyres. Therefore, all these contested goods are similar to the opponent’s vehicle tyres as they may coincide in producers, distribution channels and relevant public. Furthermore they may be complementary.

However this reasoning does not apply to the contested vehicles for locomotion by water and sleighs [vehicles] as these goods do not need tyres. These contested goods and the opponent’s vehicle tyres have different natures, purposes, producers and distribution channels. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

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 goods found to be identical or similar are directed at the public at large and at the professional public. Taking into consideration their price, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that the consumers will not buy vehicles, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. Furthermore, both, the public at large and professionals are aware that the security of driving depends on the correct working of the parts of vehicles. Consequently, the level of attention of the relevant public is rather higher than average.

3. The signs

EAGLE
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 word ‘EAGLE’, which the signs have in common, is an English word for ‘any of various birds of prey of the genera Aquila, Harpia, etc, having large broad wings and strong soaring flight’ (information extracted from Collins English Dictionary on 24/08/2017 at https://www.collinsdictionary.com/dictionary/english/eagle).

The composite mark, like the contested sign, cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of such a complex mark, unless that component forms the dominant element within the overall impression created by the composite mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (23/10/2002, T-6/01, Matratzenmarkt Concord (fig.) / Matratzen, EU:T:2002:261, § 33).

In the present case, the word ‘EAGLE’, given its central position and relatively large size, is not only more eye-catching than the word ‘DIGITAL’ of the contested sign, it is also distinctive as it has no direct meaning in relation to the relevant goods.

By contrast, the  much smaller word ‘DIGITAL’ of the contested sign is an English adjective which, means, inter alia ‘[r]elating to, using, or storing data or information in the form of digital signals’ or ‘[i]nvolving or relating to the use of computer technology’ (information extracted from Oxford Dictionaries on 25/08/2017 at https://en.oxforddictionaries.com/definition/digital). In the context of the relevant goods it refers to ‘digital technology’ which is an expression used for computer-based goods or solutions. Considering the increasing use of computer in the development and design of products, this term is weak for the relevant goods. In addition, the word ‘DIGITAL’ is written in relatively small letters and, therefore, it is is less eye-catching than the word ‘EAGLE’. The figurative element in the form of a rectangular grey label is also of limited distinctive character, because it will rather be perceived as commonly used decorative element than an element indicating the commercial origin of the goods.

Hence, the element ‘EAGLE’ must be considered to dominate the overall impression created by the contested composite mark.

In view of the above, the word ‘EAGLE’ which the signs have in common is the only element of the earlier mark and the element which dominates the overall impression created by the contested composite mark.

Visually, the signs coincide in the word ‘EAGLE’, which is the only element of the earlier mark and the most distinctive and eye-catching element of the contested sign. They differ in that this word is slightly stylised in the contested sign. However, this stylisation is not particularly elaborate and will not distract the consumers’ attention from the word itself. Furthermore, the signs differ in the additional elements of the contested sign, described above. However, these additional elements of difference are less distinctive or secondary. Therefore, overall the marks are visually similar at least to an average degree.  

Aurally, the pronunciation of the signs coincides in the sound of the word ‛EAGLE’ and differs in the sound of the word ‘DIGITAL’ of the contested sign. Since the word ‘DIGITAL’ is less distinctive, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Due to the coincidence in the word ‘EAGLE’ the signs will be associated with a similar meaning. The conceptual difference resulting from the presence of the additional word ‘DIGITAL’ in the contested sign cannot be given much weigh due to its limited distinctiveness. Therefore, the signs are conceptually 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

The goods are partly identical, partly similar and partly dissimilar. The signs are visually similar to an average degree and aurally and conceptually highly similar.

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Taking all the above into account and, in particular, since the similarities with the earlier distinctive mark are placed in the most distinctive and eye-catching element of the contested sign while the differences are confined to elements and aspects which are of limited distinctiveness or secondary, even consumers with a heightened degree of attention may be led to consider that the contested trade mark designates a new product line of the earlier mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s United Kingdom trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

• United Kingdom trade mark registration No 2 129 480 for the figurative mark
  ‘’,

• German trade mark registration No 1 058 024 for the word mark ‘EAGLE’,

• Spanish trade mark registration No M 1 806 170 for the word mark ‘EAGLE’,

• Polish trade mark registration No R.072743 for the word mark ‘EAGLE’,

• Danish trade mark registration No 1984 1510 for the word mark ‘EAGLE’,

• Bulgarian trade mark registration No 00022196 for the word mark ‘Eagle’,

• Irish trade mark registration No 110 980 for the word mark ‘EAGLE’,

• Estonian trade mark registration No 21 063 for the word mark ‘EAGLE’,

• Benelux trade mark registration No 039 009 for the word mark ‘EAGLE’.

Benelux trade mark registration No 039 009 for the word mark ‘EAGLE’ covers tires and tubes in Class 12.

United Kingdom trade mark registration No 2 129 480 covers the following goods:

Class 7: Parts and fittings for machines, motors and engines, but not including silencers and parts and fittings therefore, coil springs, constant velocity joints, drive shafts and brake callipers; machine, motor and engine belts; power transmission belts for machines, motors and engines; metallic sprockets; none of the aforesaid goods being parts and fittings for sewing machines.

Class 12: Parts and fittings for land vehicles, but not including exhaust pipes and exhaust manifolds and/or silencers or parts and fittings therefore, coil springs, constant velocity joints, drive shafts and brake callipers; drive belts and metallic sprockets for land vehicles; tyres; wheels; hubs; hub caps; inner tubes for tyres; vehicle tracks; treads for vehicles; treads for retreading tyres; parts and fittings for all the aforesaid goods.

The earlier goods in Class 7 are not considered to be complementary to the contested vehicles for locomotion by water, even though they are parts of engines and engines are parts of vehicles. The goods under comparison have different specific purposes. Motors and engines are usually assembled by vehicle manufacturers. Therefore, the goods under comparison target different publics and they have different distribution channels. Consequently, they are dissimilar.

The contested vehicles for locomotion by water are also dissimilar to the earlier goods in Class 12. Maritime vehicles have different requirements than the vehicles on which the opponent’s goods are intended to be used, namely land vehicles and parts of vehicles with tyres. Consequently, these goods have different natures, purposes, manufacturers and distribution channels. Furthermore, they are neither complementary, nor in competition.

The contested sleighs [vehicles] are sledges used for transportation on snow and ice. They are usually drawn by horses or other animals, as opposed to petrol-driven means of transportation. Due to their specific nature and method of use these goods do not share the same producers and distribution channels as the parts and fittings for machines, motors and engines or for other kinds of vehicles and no evidence has been submitted to prove the contrary. Therefore, they are dissimilar to all the opponent’s goods. (See also decision of 23 February 2016 – R 70/2015-4 – AIrMetro (fig.) / METRO (fig.) et al., § 13).

The other earlier rights invoked by the opponent cover the following goods:

German trade mark No 1 058 024: Class 12: vehicle tires;

Spanish trade mark No M 1 806 170: Class 12: tires;

Polish trade mark registration No R.072743: Class 12: tires,

Danish trade mark registration No 19 840 1510: Class 12: tires for vehicles;

Bulgarian trade mark registration No 00022196: Class 12: tires;

Irish trade mark registration No 110 980: Class 12: tyres;

Estonian trade mark registration No 21 063: Class 12: vehicle tires.

These goods have already been compared above. The outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, 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.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the United Kingdom, Germany, Spain, Poland, Denmark, Bulgaria, Ireland, Estonia and Benelux, respectively.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 10/05/2016. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the United Kingdom, Germany, Spain, Poland, Sweden, Denmark, Finland, Bulgaria, Ireland, Estonia and Benelux, respectively and prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely

 

• United Kingdom trade mark registration No 760 654: Class 12: vehicle tyres;

• United Kingdom trade mark registration No 2 129 480:

Class 7: Parts and fittings for machines, motors and engines, but not including silencers and parts and fittings therefore, coil springs, constant velocity joints, drive shafts and brake callipers; machine, motor and engine belts; power transmission belts for machines, motors and engines; metallic sprockets; none of the aforesaid goods being parts and fittings for sewing machines.

Class 12: Parts and fittings for land vehicles, but not including exhaust pipes and exhaust manifolds and/or silencers or parts and fittings therefore, coil springs, constant velocity joints, drive shafts and brake callipers; drive belts and metallic sprockets for land vehicles; tyres; wheels; hubs; hub caps; inner tubes for tyres; vehicle tracks; treads for vehicles; treads for retreading tyres; parts and fittings for all the aforesaid goods.

• German trade mark No 1 058 024: Class 12: vehicle tires;

• Spanish trade mark No M 1 806 170: Class 12: tires;

• Polish trade mark registration No R.072743: Class 12: tires,

• Danish trade mark registration No 19 840 1510: Class 12: tires for vehicles;

• Bulgarian trade mark registration No 00022196: Class 12: tires;

• Irish trade mark registration No 110 980: Class 12: Tyres;

• Estonian trade mark registration No 21 063: Class 12: Vehicle tires.

• Benelux trade mark registration No 039 009: Class 12: tires and tubes.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 03/03/2017 the opponent submitted the following evidence:

• Witness statement of a Senior Associate at Potter Clarkson LLP (representative of the opponent), dated 03/03/2017, giving the overview of the opponent’s history and activities and of the exhibits attached. It contains a table with an estimate of sales in the EU, Middle East and Africa for 2012-2016.

• Exhibit SNS1: Copies of pages with the history of the opponent’s business.

• Exhibit SNS2: Copies of 2014 and 2015 Annual reports of the Goodyear Tire & Rubber Company. They contain some references to operating income in Europe, Middle East and Africa. Although there are some mentions concerning EAGLE tyres, the evidence mainly refers to Goodyear company success. There is no information as to the number of tyres branded EAGLE that were sold in the countries for which reputation is claimed.

• Exhibit SNS3: Copies of tables with key tyres industry figures - the sector’s largest companies, from www.tyrepress.com, updated 29/05/2015 and 31/05/2016. ‘’ appears in the third position.

• Exhibit SNS4: Copies of pages from the Wikipedia concerning the opponent’s business.

• Exhibit SNS5: Copies of pages with details concerning EAGLE tyres, including details of awards won by the opponent. According to the information in the witness statement these are pages from the opponent’s website.

• Exhibit SNS6: Copies of pages listing various countries in the Americas, Europe and Middle East. ‘GOODYEAR’ appears at the top of the first page. According to the information in the witness statement, this is a list of the opponent’s local national websites. They are followed by copies of pages with pictures and details concerning various ‘Eagle’ tyres in English, German, French and Spanish. The pages in English contain information about various awards. According to the information in the witness statement, these are pages printed from the UK, German, French and Spanish websites.

• Exhibit SNS7: Copies of pages with ‘Goodyear EMEA Newsroom’ appearing at the top. They contain two articles: ‘New Goodyear Ultra-High Performance Tire Eagle F1 Asymetric 3 chosen for Porsche Panamera’, dated 07/02/2017 and ‘Goodyear showcases UItra-High Performance Tire: Eagle F1 Asymmetric 3 at Geneva 2016’, dated 01/03/2016.

 

• Exhibit SNS8: Copies of the opponent’s promotional materials. They contain a price list for Belgium (including for ‘Eagle’ products) dated 1999, promotional material in Italian for Eagle F1 tyres, dated 1998 and promotional material in English for various ‘Eagle’ tyres.

• Exhibit SNS9: Copies of pages from the website of the magazine Auto Express with an article ‘Goodyear Eagle F1 Asymmetric 3 review’, dated 25/07/2016 and pages about Auto Express stating, inter alia, that it is the UK’s car news title with over 300 000 paid-for weekly subscriptions and that the website AutoExpress.co.uk is viewed by 1.5 million unique visitors every month. There are also further details concerning the conduct of tyre review.

• Exhibit SNS10: Copies of pages from T&A Tyrepress which, according to the information on the page ‘About Us’, is the English-language tyre trade publication in Europe, distributed to 6 804 tyre and wheel professionals, primarily in the United Kingdom and Europe, but also globally and that online readership amounts to approximately 220 000 visits per month. The other pages contain articles dated between December 2015 and January 2017, namely an article about the launch of the Eagle F1 Asymmetric 3 tyres and their testing, an article about design awards from the Chicago Athenaeum Museum of Architecture and Design and the European Centre for Architecture Art Design and Urban Studies for a Google Eagle 360 concept, an article about a sport auto tyre test where the Goodyear Eagle Asymmetric 3 tyre was announced the winner and some articles about Goodyear Eagle F1 Asymmetric tyres being chosen as the original equipment on a number of cars, such as Mercedes-Benz E-Class, Mercedes-Maybach S-Class, Alfa Romeo Giulia and Range Rover Sport. There are also copies of pages from Reifenpresse.de with an article dated 07/10/2016, announcing that the Eagle F1 Asymmetric 3 has been voted a tyre of the year in Spain and an article from PneusNews.it, dated 21/12/2016, announcing that the Maserati Levante has chosen to fit Goodyear Eagle F1 Asymmetric 2 SUV tyres as the original equipment on new models.

• Exhibit SNS11: Copies of pages from KwickFit which, according to the information under ‘About Us’, is a supplier of tyres in the UK. They include information about the opponent’s business, stating that Goodyear is the Europe’s second larger tyre manufacturer, and show Goodyear tyre range including various ‘EAGLE’ tyres.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

As far as the probative value of the affidavit is concerned, it has to be assessed together with further evidence filed to prove reputation. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. Consequently, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the present case.

Most of the evidence (annual reports, pages from the opponent’s website) comes from the opponent. The pages containing the description of the opponent’s history and annual reports mainly provide information about the opponent as a company rather than the trade marks in question. Although the annual reports contain some references to the opponent’s operating income in Europe, Middle East and Africa with the information that a considerable percentage of the net sales accounting for this income came from Germany. However, there is no information about the number of tyres branded ‘EAGLE’ that were sold in the countries for which reputation is claimed. The tables from www.tyrepress.com with key tyres industry figures concern ‘GOODYEAR’ – the opponent’s company, which, as the evidence shows, offers a range of different products and services. There is no clear indication how many of the opponent’s goods being tyres branded ‘EAGLE’ were sold on the markets for which reputation is claimed. Without complementing evidence showing the whole market structure in this sector or the overall size of the relevant market in terms of money or the degree of awareness of the marks by the relevant public, it cannot be determined whether the figures presented in the witness statement and annual reports correspond to a substantial presence in the relevant markets.

The print-out from Wikipedia mainly describes the opponent’s business and history. In addition, ‘it is settled case-law that a Wikipedia article constitutes information lacking certainty, as it is taken from a collective encyclopaedia established on the internet, the content of which may be amended at any time and, in certain cases, by any visitor, even anonymously’ (16/06/2016, T-614/14, KULE, EU:T:2016:357, § 47 and the case-law cited therein).  

The articles contain information about the awards won by the opponent or reviews of its products. However, the fact that the opponent is a holder of some awards does not automatically mean that any of its marks is known to the public. It only means that the opponent’s goods meet certain quality or technical standards. The same applies to the reviews which amount to ratings or recommendations based on technical tests and criteria. Likewise, the information about the number of visitors of the pages containing this information is not conclusive either, especially since it is not specified from which countries are these visits. The information that ‘Eagle’ tyres were chosen as the original equipment on a number of cars is not put into the context of the markets and competitors in question in the countries for which reputation is claimed.

The pages from the supplier of tyres in the UK contain information about the opponent and the pictures of various opponent’s tyres. However, they do not provide information about the recognition of the marks by consumers.

As to promotional activities, the evidence is limited to a price list for Belgium (including for ‘Eagle’ products) dated 1999, promotional material in Italian for Eagle F1 tyres, dated 1998 and promotional material in English for various ‘Eagle’ tyres. This is not sufficient to show that the promotion of the marks was long, intensive and widespread enough to acquire and maintain reputation at the time of filing of the EUTMA application.

Finally, information in Reifenpresse.de that the Eagle F1 Asymmetric 3 has been voted a tyre of the year in Spain, without any further information about the criteria involved in this choice or the market structure or awareness of Spanish consumers about the ‘EAGLE’ mark. The information about the earlier marks is scattered in the evidence in relation to various countries, without giving a full picture of the marks’ position in either of them.

 

To sum up, the evidence does not clearly demonstrate the degree of recognition of the trade mark by the public in relevant territories. Furthermore, the evidence does not indicate the sales volumes or the market share for each of the countries in which reputation is claimed or the extent to which the trade marks have been promoted in these countries. As a result, the evidence is inconclusive as to whether the threshold of reputation has been reached in the relevant territories. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opposition under Article 8(4) EUTMR is based on three earlier non-registered trade marks ‘EAGLE’ used in the course of trade in the United Kingdom, Ireland and Cyprus.

The opponent claims that its rights consist of the right to sue for 'passing off' in the United Kingdom, Ireland and Cyprus under the common law provisions effective in those countries and the right to sue for unfair competition in the remaining countries of the European Union.

1. The right under the applicable law

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

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

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

The Opposition Division notes that the opponent only submitted some information on the legal protection granted to non-registered trade mark in the United Kingdom while there is no evidence concerning the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in the Republic of Ireland and in Cyprus.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent. In other words, the public would be likely to believe that goods put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

For the purposes of proving the acquisition of that right, the opponent must prove that it enjoys goodwill for the goods claimed under its mark, namely vehicle tires; vehicle inner tubes; repair kits for tires and inner tubes.

The Opposition Division will assume that the opponent has proved prior use in the course of trade of more than mere local significance in the United Kingdom for vehicle tires, which are the only goods to which references may be found in the evidence examined above in the assessment of reputation under Article (5) EUTMR. Although the level of use shown above was not sufficient to prove reputation, for the purposes of Article 8(4) EUTMR it is assumed to be sufficient to show use in the course of trade of more than mere local significance.

Likewise, it is assumed that the opponent enjoys goodwill for its vehicle tires in the mind of the purchasing public for the sign on which the opposition is based.

2. The opponent’s right vis-à-vis the contested trade mark (passing off)

The opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent.

The contested trade mark must be likely to lead the public to believe that goods to be offered by the applicant are the opponent’s goods. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods in the belief that they are the opponent’s.

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings according to which the signs are similar.

However, there is a substantial difference between the opponent’s vehicle tires and
the remaining contested goods in relation to which the examination of the opposition continues, namely vehicles for locomotion by water and sleighs [vehicles]. These goods have different natures, purposes, producers and distribution channels. Furthermore, they are neither complementary nor in competition.

In the opinion of the Opposition Division, the difference between these types of goods makes it unlikely that the opponent’s customers or potential customers will expect or assume that the opponent is responsible for the quality of the applicant’s goods. In the absence of persuasive evidence to the contrary, it is considered that use of the contested mark would not amount to a misrepresentation to the relevant public.

As no misrepresentation can occur, the conditions for passing off are not met.

Therefore, the opposition is not well founded under Article 8(4) 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. 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.

The Opposition Division

Steve HAUSER

Justyna GBYL

Begoña URIARTE VALIENTE

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.