DRAGON KING | Decision 2704297
Date Published: Sep 28, 2017
OPPOSITION No B 2 704 297
Pirelli Tyre S.p.A., Viale Piero e Alberto Pirelli, 25, 20126 Milano, Italy (opponent), represented by Wirsing Hass Zoller, Maximilianstr. 35, 80539 München, Germany (professional representative)
a g a i n s t
Techking Tires Limited, Room 1901-1904 & 1911,19F BLDG 2#, Tianbao Int’l Mansion No. 61, Haier Rd, Qingdao, Shandong, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene And Partners, Business center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).
On 27/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 704 297 is partially upheld, namely for the following contested goods:
Class 12: Bands for wheel hubs; vehicle wheel rims; vehicle wheels; inner tubes for pneumatic tires [tyres]; tires for vehicle wheels; treads for retreading tires [tyres]; tyres, solid, for vehicle wheels.
2. European Union trade mark application No 14 992 234 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 14 992 234 . The opposition is based on Italian trade mark registration No 302 015 000 010 896 and on German trade mark registration No 2 019 474 ‘DRAGON’. The opponent invoked Article 8(1)(b) EUTMR.
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 trade mark which is not yet registered, the opposing party must provide a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed — Rule 19(2)(a)(i) EUTMIR. Once the earlier application has proceeded to registration, the opponent must submit evidence of registration.
In the present case, as regards the Italian trade mark, together with the notice of opposition the opponent submitted a copy of an extract from the database of the Italian Patent and Trade Mark Office showing that the application for the invoked Italian trade mark No 302 015 000 010 896 was filed but not providing any information about its registration. It did not submit any further evidence regarding the registration of this mark until the expiry of the period for substantiation (15/12/2016).
On 11/07/2017, after being informed about the suspension of the proceedings based on the application status of one of the earlier marks, the opponent submitted a copy of the registration certificate of Italian trade mark No 302 015 000 010 896 and a translation thereof into the language of proceedings. However, according to the registration certificate, Italian trade mark No 302 015 000 010 896 was registered on 08/11/2016; therefore, it proceeded to registration within the time limit for proving the existence, validity and scope of protection of the earlier marks set by the Office in accordance with Rule 19(1) and (2) EUTMIR, which, after the extension, was until 15/12/2016.
When the opposition is based on an application, once the earlier application has proceeded to registration, the opponent must submit evidence of registration. In the present case, although the earlier trade mark was registered in November 2016, and, therefore, was already registered before the expiry of the time limit for substantiating the mark, the opponent submitted the registration certificate in July 2017, that is, after the suspension of opposition proceedings.
Furthermore, the only date appearing on the registration certificate is 08/11/2016; therefore, there is no basis or evidence on which to examine the possibility that the opponent was notified after 15/12/2016, that is, after the time limit set pursuant to Rule 19(1)(2) EUTMIR.
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.
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.
Considering all the above, since the earlier mark was already registered at the time of expiry of the period set to prove the validity, existence and scope of protection of the earlier mark and there is no reason to believe that the opponent did not possess this information or the evidence proving it at that time, yet the opponent did not submit the evidence of registration of the earlier right within this time limit, the Opposition Division has to conclude that the opponent failed to substantiate its earlier Italian trade mark No 302 015 000 010 896. An application certificate is not sufficient to prove that the trade mark has been registered. In other words, it cannot serve to prove the existence of a trade mark registration.
The opposition must therefore be rejected as unfounded as far as it is based on earlier Italian trade mark No 302 015 000 010 896 and the examination of the opposition will proceed as regards earlier German trade mark No 2 019 474.
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: Motorcycle tires.
The contested goods are the following:
Class 12: Traction engines; bands for wheel hubs; vehicle wheel rims; vehicle wheels; bicycles; handling carts; inner tubes for pneumatic tires [tyres]; tires for vehicle wheels; treads for retreading tires [tyres]; tyres, solid, for vehicle wheels.
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 tires for vehicle wheels include, as a broader category, the opponent’s motorcycle tires. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested tyres, solid, for vehicle wheels overlap with the opponent’s motorcycle tires. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested inner tubes for pneumatic tires [tyres] are torus-shaped balloons made from an impermeable material and are inserted into tyres and inflated to retain air pressure. Motorcycle tyres include pneumatic motorcycle tyres, which are designed to be used with inner tubes. Since inner tubes in such tyres are necessary components for the tyre to form a functional wheel, the contested inner tubes for pneumatic tires [tyres] and the opponent’s motorcycle tires are complementary. Furthermore, they target the same relevant public, are distributed through the same distribution channels and tend to come from the same producers. Therefore, they are highly similar.
The contested bands for wheel hubs; vehicle wheel rims; vehicle wheels are wheels or parts of wheels. Since a motorcycle is a type of vehicle and the opponent’s motorcycle tires are designed to be used in conjunction with motorcycle wheels, there is a close link between these goods, as they have the same distribution channels and target the same relevant public. Furthermore, these goods are complementary. Therefore, they are considered similar.
Tread is the thick moulded part of a vehicle tyre that grips the road. A worn tyre can be retreaded by replacing the tread on worn tyres. The contested treads for retreading tires [tyres] and the opponent’s motorcycle tires have the same distribution channels, target the same relevant public and can have the same producers. Therefore, they are similar.
A traction engine is a steam- or diesel-powered road vehicle used for pulling very heavy loads. Although traction engines are a type of vehicle, their nature and purpose are different from those of the opponent’s motorcycle tires. They do not have the same distribution channels, are made by different manufacturers, are not in competition and are not complementary. Therefore, they are dissimilar.
The contested bicycles and the opponent’s motorcycle tires have different natures and purposes. They are produced by different manufacturers and do not have the same distribution channels, since bicycles and their accessories are usually sold either in specialised bicycles stores or in retail stores where sporting equipment is available, whereas motorcycle tires will be distributed through specialised stores. Therefore, the contested bicycles and the opponent’s motorcycle tires are dissimilar.
Handling carts are used for the movement, storage, control or protection of materials, goods and products throughout the process of manufacturing, distribution, consumption and disposal. Although they have wheels, their nature and purpose are different from those of the opponent’s motorcycle tires. They will be produced by different manufacturers, target a different public and are distributed through different distribution channels. Furthermore, they are not complementary or in competition. Therefore, they are dissimilar.
- 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 mostly at the public at large, but some are directed also at business customers with specific professional knowledge.
The degree of attention is considered average.
- The signs
DRAGON | |
Earlier trade mark | Contested sign |
The relevant territory is Germany.
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 is a word mark, ‘DRAGON’. The word ‘DRAGON’ as such has no meaning in German; however, it cannot be excluded that a part of the relevant public will understand it as an English word meaning a mythical monster usually represented as breathing fire and having a scaly reptilian body, wings, claws and a long tail. The distinctiveness of the verbal element ‘DRAGON’ is considered average irrespective of whether or not the relevant public will recognise its semantic content as described above, since it has no meaning in relation to the relevant goods.
The contested sign is a figurative mark consisting of verbal element ‘DRAGON KING’ depicted in grey, rather standard, upper case italic letters.
The word ‘DRAGON’ may be perceived by the relevant public as described above for the earlier trade mark. Whether or not the relevant public perceives its semantic content, its distinctiveness is considered average. The word ‘KING’ does not have a meaning in German; however, due to its similarity to the German word ‘König’ and because it is a basic commonly used word, it will be perceived by the relevant public as the English word ‘KING’, which means ‘a person, animal, or thing considered as the best or most important of its kind’. Furthermore, the Court has confirmed that the word ‘KING’ in German is used in the field of advertising in the sense of ‘the best in one area’ (20/09/2011, T-99/10, Tofuking, EU:T:2011:497, § 26) and therefore has only a low degree of distinctiveness for the German-speaking public.
It follows that the verbal element ‘DRAGON’ is the most distinctive element in the contested sign.
Contrary to the opponent’s arguments, the Opposition Division considers that the contested sign has no elements that could be considered clearly more dominant than other elements. The contested sign consists of two verbal elements, which are depicted in the same typeface, size and colour. The fact that the verbal element ‘DRAGON’ appears first and consists of more letters that the following verbal element, ‘KING’, is insufficient to consider it visually outstanding.
Visually, the signs coincide in verbal element ‘DRAGON’, which is distinctive in relation to the goods. The signs differ in verbal element ‘KING’ in the contested sign, which has no counterpart in the earlier trade mark. As stated above, the verbal element ‘KING’ has a low degree of distinctiveness. The coinciding verbal element ‘DRAGON’ has significant visual influence on the visual comparison, since it is fully contained in the contested sign, is the first verbal element and is visually longer than the verbal element ‘KING’. Furthermore, the stylisation of the contested sign is rather standard.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the syllables ‘DRA-GON’, present identically in both signs. Since the verbal element ‘DRAGON’ appears at the beginning of the contested sign, it will be pronounced before the verbal element ‘KING’. The pronunciation of the signs differs in the sound of the letters forming the word ‛KING’ of the contested mark, which has no counterpart in the earlier mark and has a low degree of distinctiveness, as stated above.
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The verbal element ‘DRAGON’, present in both signs, will be perceived either as having no semantic concept or as having an identical concept in both signs. However, the differentiating word ‘KING’, present in the contested sign, will evoke the meaning of being the most important in the group or the best in the area, as stated above. Since the distinctiveness of the verbal element ‘KING’ is low and it cannot indicate the commercial origin of the contested sign, the attention of the relevant public will be attracted by the preceding verbal element, ‘DRAGON’, which is of average distinctiveness and present identically in both signs.
Therefore, the signs are conceptually highly similar.
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.
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.
- Global assessment, other arguments and conclusion
In the present case, the goods are partly identical, partly similar to various degrees and partly dissimilar. They target both the public at large and business customers with specific professional knowledge.
The signs are visually, aurally and conceptually highly similar.
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.
In the present case, the signs coincide in the verbal element ‘DRAGON’. This coinciding element is an independent word element in the contested sign and this commonality will be clearly perceived by the relevant public.
In word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30).
The word ‘DRAGON’ is the only word in the earlier mark and is entirely included as the first word in the contested sign. Applying the above principle and taking into account the fact that consumers tend to read from left to right, the word ‘DRAGON’ will be the first element of the contested sign that will catch the consumer’s attention.
Taking into account the facts that the word elements in the contested sign are not highly stylised and that the signs differ mainly in the second verbal element of the contested sign, which has a low degree of distinctiveness, this difference is insufficient to outweigh the similarity between the signs.
It follows that the relevant public would be likely to believe that the goods sold under the contested sign came from the undertaking that owns the earlier word mark ‘DRAGON’, or that goods sold under these signs came from economically linked undertakings.
Considering all the above and applying the principle of interdependence, the Opposition Division finds that there is a likelihood of confusion and 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 extensive use and 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.
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
Michaela SIMANDLOVA | Birute SATAITE-GONZALEZ | Zuzanna STOJKOWICZ |
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.