FARMGRIP | Decision 2727389
Date Published: Oct 1, 2017
OPPOSITION No B 2 727 389
Continental Reifen Deutschland GmbH, Vahrenwalder Str. 9, 30165 Hannover, Germany (opponent), represented by Florian Schleifer, Continental Aktiengesellschaft, Vahrenwalder Str. 9, 30165 Hannover, Germany (employee representative)
a g a i n s t
MRF Ltd, 124 Greams Road, Chennai 600006, India (applicant), represented by Beck & Rössig, Cuvilliésstr. 14, 81679 München, Germany (professional representative).
On 28/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 727 389 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 087 315 for the word mark ‘FARMGRIP’. The opposition is based on European Union trade mark registrations No 3 814 845 (for the word mark ‘VAN-GRIP’) and No 10 098 242 (for the word mark ‘ICE-GRIP’) and international trade mark registration No 935 714 designating the European Union (for the word mark ‘MASTER-GRIP’). The opponent invoked Article 8(1)(b) EUTMR.
SUBSTANTIATION
International trade mark registration No 935 714 designating the European Union (for the word mark ‘MASTER-GRIP’)
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
In the present case the notice of opposition was not accompanied by any evidence as regards the earlier international trade mark registration No 935 714 designating the European Union (for the word mark ‘MASTER-GRIP’) on which the opposition is based.
On 13/07/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 13/11/2016. The opponent requested an extension of its time limit until 13/01/2017.
The opponent did not submit any evidence concerning the substantiation of this earlier trade mark.
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 this or earlier right. The examination of the opposition will proceed based on the remaining earlier rights.
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 and services
The goods on which the opposition is based are the following:
- EUTM 3 814 845 - VAN-GRIP
Class 12: Tyres, solid rubber tyres, complete wheels, inner tubes for tyres.
- EUTM 10 098 242 - ICE-GRIP
Class 12: Apparatus for locomotion by air or by water.
The contested goods and services are the following:
Class 12: Tyres, tubes and flaps for use on land, air or on water vehicles all being goods included in international class 12, rubber retreads for use on land air or on water vehicles; tyres and tubes; flaps; treads and tread rubber for retreading tyres and parts and fittings thereof.
Class 35: Retail and online retail services connected with tyres tubes and flaps for vehicles.
Class 37: Fitting services for tyres; Replacement of tyres; Repair of Tyres.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 12
Tyres are identically contained in both lists of goods.
The contested Tyres for use on land, air or on water vehicles all being goods included in international class 12 are included in the broad category of the opponent’s tyres. Therefore, they are identical.
The contested tubes for use on land, air or on water vehicles all being goods included in international class 12 overlap with the opponent’s inner tubes for tyres. Therefore, they are identical.
The contested tubes include, as a broader category the opponent’s inner tubes for tyres. 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 flaps for use on land, air or on water vehicles all being goods included in international class 12, flaps are similar to the opponent’s goods tyres as they may originate from the same producers, are available through the same distribution channels and are directed at the same consumers.
The contested rubber retreads for use on land air or on water vehicles; treads and tread rubber for retreading tyres are parts of tyres which are bought by specialist companies which restore tyres. They are directed at different consumers, do not share the same nature, are available through different distribution channels and also normally do not originate from the same companies as the opponent’s goods in Class 12. For these reasons, these goods are considered to be dissimilar. The same reasoning applies to the remaining contested goods parts and fittings thereof [treads and tread rubber for retreading tyres]. These goods are also considered to be dissimilar.
Contested services in Class 35
Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
Therefore, the contested retail and online retail services connected with tyres tubes are similar to a low degree to the opponent’s inner tubes for tyres.
In relation to the contested retail and online retail services connected with flaps for vehicles, the following applies: Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical. Therefore, these contested services are dissimilar to the opponent’s goods.
Contested services in Class 37
Since by nature goods and services are dissimilar, a similarity between goods and their installation, maintenance and repair can only be established when:
• it is common in the relevant market sector for the manufacturer of the goods to also provide such services; and
• the relevant public coincides; and
• installation, maintenance and repair of these goods are provided independently of the purchase of the goods (not aftersales services).
In the case at hand, it can be stated that the contested fitting services for tyres; replacement of tyres; repair of tyres are dissimilar to the opponent’s goods in Class 12 as the producer of tyres normally does not fit and replace tyres. These services, even though they are directed at the same consumers, originate from different producers/providers, their purpose is different (the purchase of tyres and the fitting of these) and they are not in competition.
- 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 and services found to be identical or similar are directed at the public at large. The degree of attention is considered to be average.
- The signs
| FARMGRIP |
Earlier trade marks | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The element ‘GRIP’ is commonly used and descriptive in the major part of the EU such as the English-, German-, Dutch-speaking parts, as to refer to the traction qualities of tyres, and therefore is non-distinctive for this part of the public for the relevant goods and services.
However, for the other part of the public, such as the Bulgarian-speaking public, it has no meaning in relation to tyres and the sale of tyres and is distinctive.
The other verbal elements ‘Ice’, ‘Van’ and ‘Farm’ are equally non-distinctive for tyres for a part of the relevant public, such as the English-, German- and Dutch-speaking parts. This is because the consumers will understand that these tyres are designated for use on vans, on farm vehicles or that they can be used in icy conditions. However, for another part of the public, such as the Bulgarian-speaking public, they have no meaning and are distinctive.
Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Visually, the signs coincide alone in ‘GRIP’, which is the second verbal element in the earlier marks, separated with a hyphen and is contained in the contested mark at the end of the mark. However, they differ in the more important beginnings of the signs.
Therefore, the signs are similar to a slightly lower than average degree for the public for which ‘GRIP’ has a meaning and to an average degree for the part of the public which does not understand this verbal element.
Aurally, the pronunciation of the signs coincides in the syllable ‛GRIP’, present identically in the signs at the end of each mark. The pronunciation differs in the syllables ‘ICE’, ‘VAN’ and ‘FARM’ in the beginnings of each mark.
Therefore, the signs are similar to a slightly lower than average degree for the public for which ‘GRIP’ has a meaning and to an average degree for the part of the public which does not understand this verbal element.
Conceptually, neither of the signs has a meaning for the Bulgarian-speaking public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. For the major part of the relevant public, the following applies: Although the coinciding word ‘GRIP’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the other verbal elements, which albeit also being non-distinctive for tyres, will evoke different concepts.
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 marks
The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the Bulgarian-speaking public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.
For the major part of the public, such as the English-, German- and Dutch-speaking parts of the relevant territory the only distinctiveness can be found in the specific combination of the two non-distinctive terms. Thus, the marks are considered to be of very low distinctive character for the major part of the public.
- Global assessment, other arguments and conclusion
The goods and services are identical, similar (to various degrees) and dissimilar. The similarities and differences have been duly established in the sections above. Although the signs coincide aurally and visually in the element GRIP, a likelihood of confusion does not exist since this element does not play an independent role in the contested trade mark and because there are additional distinctive elements. The different elements at the beginning of the signs are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing also in mind that the common elements are of a descriptive nature for the major part of the relevant public. The remaining part of the public, for which none of the verbal elements has a meaning, such as the Bulgarian-speaking part, will not artificially dissect the contested mark and is therefore not likely to confuse the marks at hand.
It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘GRIP’ constitute a ‘family of marks’ or ‘marks in a series’. The opponent also refers to a trade mark called ‘SPEED-GRIP’, which however was not claimed as an earlier right of the opposition. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.
In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.
When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.
Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.
The opponent only filed two website excerpts which show that the company Semperit was purchased by the Continental Group in 1985 and another website from Semperit which shows that tyres under the trade mark names Van-Grip 2, Speed-Grip 2 and Master-Grip 2 are on sale.
In the present case, the opponent failed to prove that it uses a family of ‘GRIP’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark. The evidence filed by the opponent, as seen above, does not even show use of any of the marks claimed to form a family of marks as two website excerpts are clearly not sufficient to show use of the marks.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Tobias KLEE | Lars HELBERT | Sigrid DICKMANNS |
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.