METO | Decision 2014010

Date Published: Oct 1, 2017

OPPOSITION No B 2 014 010

MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by MIP Metro Group Intellectual Property GmbH & Co. KG, Thomas Honnet, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)

a g a i n s t

Sheng Zhu Wu, No.9201 Yaqiao Garden, Haicang, Xiamen, Fujian 361009, People's Republic of China (holder), represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax, West Yorkshire HX1 2HY, United Kingdom (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 014 010 is upheld for all the contested goods.

2.        International registration No 1 104 916 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 104 916. The opposition is based on, inter alia, European Union trade mark registration No 7 585 045. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The 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 European Union trade mark registration No 7 585 045.

1. The goods and services

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

Class 35: Wholesale services, including via the Internet and/or by means of teleshopping programmes, in relation to chemicals, cleaning, polishing and scouring preparations, substances for laundry use, paints, chemist's shop articles, cosmetics, razors and accessories therefor, perfumery, consumables for household purposes, fuels, illuminants and motor fuels, industrial oils and greases, lubricants, candles, health sector goods, machines, tools and metal goods, building materials, DIY articles and garden articles, hobby requisites and craft supplies, electric goods and electronic goods, sound carriers and data carriers, apparatus for lighting, heating, cooking, refrigerating, drying and ventilating, steam cleaning and steam ironing apparatus, sanitary installations and accessories therefor, vehicles and vehicle accessories, bicycles and bicycle accessories, motorised two-wheeled vehicles and accessories therefor, fireworks, clocks and watches and jewellery, optical instruments and apparatus, musical instruments, printed matter, stationery, office requisites, bag makers' goods and saddlery, furniture, furnishings, tents, tarpaulins, clothing, shoes, textile goods, headgear, goods of leather and imitations of leather, trunks and travelling bags, holdalls and handbags, rucksacks, umbrellas and parasols, playthings, sports apparatus and sports equipment and accessories, foodstuffs and beverages, agricultural products, horticultural products and forestry products, tobacco goods and other luxury items, namely alcohol, coffee, tea, chocolate, sugar and spices, and in the field of household goods, namely electric and non-electric household and kitchen equipment, glassware, ceramics, porcelain, metal goods and plastic goods for household and kitchen purposes, vessels for household and kitchen purposes, cooking pot sets, and in relation to decorative articles and decorative material, namely ornaments, plants (including artificial plants), fruits (including artificial fruits), foodstuffs (including artificial foodstuffs), seasonal, festive, party and themed decorations for objects, windows, rooms, buildings and spaces, garlands, flags and films, online and/or catalogue mail order services in relation to chemicals, cleaning, polishing and scouring preparations, substances for laundry use, paints, chemist's shop articles, cosmetics, razors and accessories therefor, perfumery, consumables for household purposes, fuels, illuminants and motor fuels, industrial oils and greases, lubricants, candles, health sector goods, machines, tools and metal goods, building materials, DIY articles and garden articles, hobby requisites and craft supplies, electric goods and electronic goods, sound carriers and data carriers, apparatus for lighting, heating, cooking, refrigerating, drying and ventilating, steam cleaning and steam ironing apparatus, sanitary installations and accessories therefor, vehicles and vehicle accessories, bicycles and bicycle accessories, motorised two-wheeled vehicles and accessories therefor, fireworks, clocks and watches and jewellery, optical instruments and apparatus, musical instruments, printed matter, stationery, office requisites, bag makers' goods and saddlery, furniture, furnishings, tents, tarpaulins, clothing, shoes, textile goods, headgear, goods of leather and imitations of leather, trunks and travelling bags, holdalls and handbags, rucksacks, umbrellas and parasols, playthings, sports apparatus and sports equipment and accessories, foodstuffs and beverages, agricultural products, horticultural products and forestry products, tobacco goods and other luxury items, namely alcohol, coffee, tea, chocolate, sugar and spices, and in the field of household goods, namely electric and non-electric household and kitchen equipment, glassware, ceramics, porcelain, metal goods and plastic goods for household and kitchen purposes, vessels for household and kitchen purposes, cooking pot sets, and in relation to decorative articles and decorative material, namely ornaments, plants (including artificial plants), fruits (including artificial fruits), foodstuffs (including artificial foodstuffs), seasonal, festive, party and themed decorations for objects, windows, rooms, buildings and spaces, garlands, flags and films, auctioneering, including on the Internet; import-export agencies; receiving, processing and handling of orders (office functions); procurement services for third parties (acquisition of goods and services for other companies); order placement and delivery services and invoice management, including within the framework of e-commerce; invoicing services; conducting bonus and loyalty programmes, being customer loyalty schemes for marketing purposes (included in class 35);follow-up of bonus and loyalty programmes being customer loyalty schemes, by means of the evaluation and compilation of statistical data (included in class 35);advertising, attracting customers and customer care by means of mail advertising (mailings);arranging and conducting of exhibitions and trade fairs for commercial or advertising purposes; planning, devising and conducting advertising initiatives; presentation of companies on the Internet and other media; sponsoring in the form of advertising; publication of printed matter for advertising purposes, in particular catalogues; presentation of goods on communication media, for retail and wholesale purposes; updating of advertising material; shop-window dressing; sales promotion (for others); rental of advertising space, including on the Internet (banner exchange);rental of advertising material and advertising time on communication media; distribution of samples, seeking sponsorship; bringing together of various goods in the aforesaid wholesale fields (except the transport thereof) for others, to allow customers to view and purchase the goods more easily; marketing (market research), including on digital networks; market research; opinion polling; merchandising (sales promotion);research in computer data files (for others) and/or business research; business information, maintenance of data in computer databases; price setting for goods and services, invoice management for electronic ordering systems; office machines and equipment rental; vending machine rental services; rental of sales stands; arranging subscriptions to a telecommunications service (for others);providing of addresses, commercial and business contacts, including via the Internet, arranging of commercial transactions, for others, including within the framework of e-commerce, of mobile phone contracts (for others), of contracts, for others, for the buying and selling of goods; arranging of advertising and promotion contracts for third parties; arranging newspaper subscriptions (for others); business consultancy; planning and monitoring of business developments with regard to organisational matters; planning (assistance) regarding management; professional business consultancy for franchise concepts.

The contested goods are the following:

Class 12: Direction signals for vehicles; windshield wipers; upholstery for vehicles; seat covers for vehicles; brakes for vehicles; automobile wheel axis holder; bumpers for automobiles; horns for vehicles.

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

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. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35.

Therefore, the contested direction signals for vehicles; windshield wipers; upholstery for vehicles; seat covers for vehicles; brakes for vehicles; automobile wheel axis holder; bumpers for automobiles; horns for vehicles are similar to a low degree to the opponent’s wholesale services, including via the Internet and/or by means of teleshopping programmes, in relation to vehicle accessories.

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 and services found to be similar to a low degree are directed at business customers with specific professional knowledge or expertise. The degree of attention is deemed to range from average to higher than average depending on the frequency, price and level of speciality of the goods covered by the contested sign or object of the opponent's services.

3. The signs

Earlier trade mark	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).

The contested sign has no meaning for the relevant public in relation to the relevant goods and is, therefore, distinctive.

The word 'METRO' of the earlier mark will be understood by part of the relevant public at least as referring to the underground railway system available in some cities. It should be reminded that the relevant services are wholesale services, including via the Internet and/or by means of teleshopping programmes, in relation to vehicle accessories. 'METRO' is not descriptive, allusive or otherwise weak for such services and, therefore, it is distinctive.

Visually, the signs coincide in the letters 'MET(*)O'. However, they differ in the additional letter 'R' and colours of the earlier mark as well as in the specific, yet standard, typography employed in each sign. These graphic elements are not particularly elaborate or sophisticated, at least not to such an extent as to have much of an impact on the consumers. In this respect, it should be noted in any event that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the signs are similar to an average degree.

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 'MET(*)O', present identically in both signs. The pronunciation differs in the sound of the additional letter 'R' placed in the middle of the contested mark where it is less perceptible. Therefore, the signs are highly similar.

Conceptually, although part of the relevant public, at least, will perceive the meaning of the earlier mark, the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar whereas, if the earlier mark should not have a meaning for part of the public, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

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 services 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the contested goods are similar to a low degree to the opponent's services and the signs are visually similar to an average degree and aurally similar to a high degree. This brings into play the above mentioned principle of interdependence. In addition, account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (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). In view of this, it is considered that the concept conveyed by the earlier mark is not sufficient to counteract the visual and aural similarities between the signs.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 585 045. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is 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/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 7 585 045 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 holder is the losing party, it 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Sandra IBAÑEZ

Martina GALLE

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.

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.