EVO FORMANCE | Decision 2681016

Date Published: Oct 1, 2017

OPPOSITION No B 2 681 016

Jaguar Land Rover Limited, Trade Marks Department W/1/6, Abbey Road, Whitley, Coventry, Warwickshire CV3 4LF, United Kingdom (opponent), represented by Reddie & Grose LLP, 16 Theobalds Road, London WC1X 8PL, United Kingdom (professional representative)

a g a i n s t

Tania Rodríguez Rodríguez, 626 McGarity, Kyle Texas 78640, United States of America, and Eric Talbott Cole, 626 McGarity, Kyle Texas 78640, United States of America (hereinafter jointly referred to as the applicants), represented by Isern Patentes y Marcas S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 681 016 is upheld for all the contested goods.

2.        European Union trade mark application No 14 761 043 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 14 761 043. The opposition is based on, inter alia, European Union trade mark registration No 8 797 425. The opponent invoked Article 8(1)(b), 8(4) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM No 8 797 425, for which the opponent claimed reputation in the EU.

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.

In the present case, the applicants did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

EVOQUE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the letters ‘EVO’, which also dominate the visual impression of the contested sign due to their large size. However, they differ in the letters ‘QUE’ of the earlier mark, as well as in the letters ’FORMANCE’ and in the figurative elements (typescript, graphic element above the words, arrangement) of the contested sign.

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 letters ‛EVO’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‘QUE’ of the earlier mark, as well as in that of the letters ’FORMANCE’ of the contested sign.

Conceptually, for a part of the relevant public (e.g. German speakers), none of the word or figurative elements of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for that part of the public.

In contrast, another part of the relevant public (e.g. Spanish speakers) will perceive the earlier sign as the first or third person singular of the present subjunctive tense of the verb ‘to evoke’, while the word ‘evo’ of the contested sign could be understood as referring to an indefinite amount of time. The word “formance” and the figurative element of the contested sign will still have no meaning. Since the signs will be associated with a dissimilar meaning, for this part of the public they are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar to the extent they have in common the letters “EVO”.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

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 04/11/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union 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

Class 12:         Land motor vehicles and parts and fittings therefor.        

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 13/10/2016 the opponent submitted the following evidence:

• Extract from the opponent’s website, printed on 13/10/2016, showing a car under the mark RANGE ROVER EVOQUE, together with the legend ‘over 170 international awards and counting’.

• Two brochures, both dated in 2016, showing different models of EVOQUE cars, as well as their accessories.

• Extract from the Wikipedia website, printed on 12/10/2016, about the RANGE ROVER EVOQUE, in which it is described as a compact luxury SUV produced by the opponent since July 2011. In addition, it states that ‘since its launch, the EVOQUE has received acclaim from the automotive press including several ‘best of’ awards’, and mentions worldwide sales of 124 292 units in the year 2013.

• A collection of 7 press clippings from major UK newspapers and car magazines, dated between 26/02/2012 and 05/07/2016, referring to the RANGE ROVER EVOQUE car. By way of example, one of the articles, from the magazine ‘Car dealer’ states the following: ‘With more than half a million sold globally in more than 180 countries since 2011, the EVOQUE –driven everywhere from Madrid to Manila – is Land Rover’s greatest sales success story’.

• 2013, 2015 and 2016 reports from the UK ‘Society of Motor Manufacturers and Traders’ (a large trade association with more than 550 members), showing that, in 2012, 2014 and 2015, the EVOQUE was among the top five models manufactured in the UK in terms of number of units. The report also shows that it was the best-selling dual purpose car in the UK in 2012 and was among the top five in 2015, with a market share within its segment of 9% and 5.9%, respectively.

• Definition of “dual purpose vehicle” extracted from the UK Road Vehicles Regulations 1986.

• Extract from the opponent’s website, printed on 13/10/2016, showing the RANGE ROVER EVOQUE’s vehicle configuration platform.

• Additional press clippings and web extracts from UK magazines and websites, dated between 04/04/2011 and 03/03/2016, mentioning different awards won by the EVOQUE vehicle, including Car of the Year in the UK, Autoexpress New Car Honours, BBC Top Gear’s Car of the Year, Car and Driver Spain Car of the Year, and designs trophies from France and the UK.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in the European Union for land motor vehicles.

It is clear from the evidence that since 2011 the earlier trade mark has been subject to intensive use and is generally known in the relevant market, and in particular in the United Kingdom, where it enjoys a consolidated position among the leading brands of cars, as it has been attested by the SMMT independent reports. The number of units sold, the market share shown by the evidence and the various references in the press to its success and awards all unequivocally show that the earlier mark ‘EVOQUE’ enjoys a high degree of recognition among the relevant public.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The sales figures, press clips and awards relate only to land motor vehicles, and while some of the remaining evidence indicates that parts and fittings therefor are also sold together with the vehicles, the reputation for the latter among the relevant public has not been established.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, the signs are similar to the extent they share the letters EVO, which are the first three letters of the earlier sign and the dominant element of the contested sign. The contested goods are all vehicles and accessories therefor, and therefore pertain to the same broad category as the land motor vehicles of the earlier mark, even if some of them (such as apparatus for locomotion by air or water) are not similar. The strength of the earlier mark’s reputation in the relevant market, and therefore also the enhanced distinctiveness it has acquired through use, are quite significant. Its inherent distinctive character is average, since it does not convey any meaning related to the goods at issue. Finally, and also in view of the previous factors, there would be a likelihood of confusion on the part of the public for the contested goods that are deemed to be identical or similar.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, the opponent claims that use of the contested mark would take unfair advantage of the distinctive character or the repute of the earlier mark and, in the alternative, that it would be detrimental to its distinctive character (dilution).

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods:

Class 11:        Headlights, headlamps, light bulbs, taillights, lamps and lights for motor vehicles; Reflectors for vehicles; Lighting apparatus for vehicles, Ventilating apparatus for vehicles, Deodorising apparatus for dispensing scents in motor vehicles. 

Class 12:         Vehicles; Apparatus for locomotion by land, air or water; Interior and exterior fittings for motor vehicles, included in this class; Parts and fittings for land, water and air vehicles. 

Class 27:         Carpets for automobiles, Mats for vehicles [not shaped].

As seen above, the earlier trade mark was found to have a reputation for:

Class 12:        Land motor vehicles.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent claims that the strong reputation of the earlier mark is such that it is highly likely that injury to the mark would occur, in particular in the form of taking unfair advantage. It argues that this is precisely an example of coat-tailing or free-riding, whereby the new mark, through the connection made in the mind of the consumers with the reputed earlier trade mark, would benefit from the power of attraction, reputation, prestige and the consistent selling power of the earlier trade mark, without the need for the applicants to make a financial investment in promoting its own brand.

It further claims that the high reputation of the earlier mark makes the probability of a future, non-hypothetical risk of unfair advantage so obvious that it can be taken for granted without further evidence. The opponent fails to see that the applicants have due cause to use the contested EUTMA other than to make the link to the earlier mark of the opponent.

The Opposition Division considers that the opponent’s claim is well reasoned and contains a coherent line of argument demonstrating what the unfair advantage would consist of and how it would occur in the ordinary course of events.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

In these circumstances, there is no need to examine the alternative claim on dilution.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

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

Carmen SÁNCHEZ PALOMARES

José Antonio GARRIDO OTAOLA

Ana MUÑIZ RODRÍGUEZ

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.