ONDA 1962 | Decision 2735788
Date Published: Sep 22, 2017
OPPOSITION No B 2 735 788
Honda Motor Co., Ltd., 1-1, Minami-Aoyama 2-chome, Minato-Ku, Tokyo 107-8556, Japan (opponent), represented by Brevalex, 95, rue d’Amsterdam, 75378 Paris Cedex 8, France (professional representative)
a g a i n s t
Riginos Yachts Ανωνυμη Εμπορικη Και Μεσιτικη Εταιρεια, Περγάμου 27, 16675 Γλυφάδα, Greece (applicant), represented by Vasileios Ikonomidis, Vassilissis Sofias Ave. 112, 11527 Athens, Greece (professional representative).
On 11/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 735 788 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 419 559 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 419 559 . The opposition is based on, inter alia, European Union trade mark registration No 12 393 . The opponent invoked Article 8(1)(b) and (5) 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 12 393.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 7: Motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); parts and fittings for all aforesaid goods.
Class 12: Vehicles; apparatus for locomotion by land, air or water, parts and fittings for all the aforesaid goods.
Class 37: Building construction; repair; installation services.
The contested goods and services are the following:
Class 12: Personal watercraft; Marine vehicles; Dinghies; Launches; Motor water vehicles; Powerboats; Ships; Seacraft; Vessels [boats and ships]; Leisure boats; Recreational jet boats; Inflatable boats; Parts and fittings for water vehicles.
Class 37: Repair or maintenance of vessels; Naval shipyard services; Marine construction; Maintenance and repair of ships; Building of naval vessels; Repair of water vehicles; Maintenance and repair of water 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.
The applicant claims that the opponent uses its earlier mark for only some of the goods and services for which it is registered, namely only for outboard engines in Class 7. The Opposition Division can consider only the list of goods and services that appears on the trade mark registration certificate, without entering into the opponent’s actual business (unless Article 42 EUTMR concerning proof of use is applicable, but it is not in this case).
Indeed, the comparison of the goods and services must be based on the wording indicated in the lists of goods and services. Any actual or intended use not stipulated in the lists of goods and services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods and services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).
Contested goods in Class 12
The contested personal watercraft; marine vehicles; dinghies; launches; motor water vehicles; powerboats; ships; seacraft; vessels [boats and ships]; leisure boats; recreational jet boats; inflatable boats are included in the broad category of the opponent’s apparatus for locomotion by water. Therefore, these goods are identical.
The contested parts and fittings for water vehicles are identical to the opponent’s parts and fittings for the aforesaid goods (apparatus for locomotion by water).
Contested services in Class 37
The contested marine construction; building of naval vessels are included in the broad category of the opponent’s building construction. Therefore, they are identical.
The contested naval shipyard services are services whose aim is to repair and build ships in one place, namely a shipyard or dockyard. Therefore, they are included in the opponent’s broad category building construction and these services are therefore identical.
According to the Office’s Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), the term repair services in Class 37 lacks the clarity and precision to specify the scope of protection of these services, as it simply states that these are repair services, and not what is to be repaired. As the goods to be repaired may have different characteristics, the repair services will be carried out by service providers with different levels of technical capabilities and know-how, and may relate to different market sectors.
Therefore, the opponent’s repair services and the contested repair or maintenance of vessels; maintenance and repair of ships; repair of water vehicles; maintenance and repair of water vehicles coincide in their nature. Their purpose, in the broadest sense, may also be the same, as they are intended for fixing something that is broken, damaged or not working properly. To that extent, these services are similar to a low degree. However, in the absence of an express limitation by the opponent to clarify its services, it cannot be assumed that they coincide in other criteria.
- 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 to a low degree are directed at the public at large (leisure boats, etc.) and at business customers with specific professional knowledge or expertise (marine vehicles, ships; naval shipyard services, etc.). Taking into consideration the high price of the goods and services in question and the specialised nature of most of the services, it is to be expected that the degree of attention of the consumers is higher than average.
- 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking public, for which the letter ‘H’ of the earlier mark is silent and for which the degree of aural similarity between the signs is greater.
The earlier mark is composed of the verbal element ‘HONDA’, written in rather standard bold upper case letters. The verbal element ‘HONDA’ has no meaning and is therefore distinctive to an average degree in relation to the goods and services in question.
The contested sign is a figurative mark consisting of a coat of arms containing the following elements: the word ‘ONDA’, the number ‘1962’, two horizontal white lines, two wavy white lines, some decorative white swirls and, in the centre, a white trident inside a black circle. All of these different elements are depicted in white on either a black or a blue background with white borders.
The figurative element depicting a coat of arms is commonly used in trade as a heraldic symbol denoting values such as tradition, nobility and respectability. It may be perceived by the public as denoting the idea that the applicant is a long-standing company (since 1962) and that the relevant goods and services are manufactured and/or provided following traditional methods. Therefore, it is considered a laudatory element.
The word ‘ONDA’ depicted at the top of the coat of arms is meaningless and therefore distinctive to an average degree in relation to the goods and services. Contrary to the applicant’s allegations, the Opposition Division considers that the number ‘1962’ is not particularly relevant but is instead descriptive, since it will be perceived as a date, for instance the date of establishment of the applicant and/or of its trade mark. Regarding the remaining elements of the coat of arms, they are essentially of an ornamental nature and the trident alludes to the marine character of the goods and services.
Furthermore, 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). Consequently, the verbal element ‘ONDA’ is the most distinctive element of the contested sign.
The marks in question have no elements that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the string of letters ‘ONDA’. They differ in the initial letter ‘H’ of the earlier mark and in the further verbal and figurative elements of the contested sign, as described above. Considering that ‘ONDA’ is the most distinctive element of the contested sign and its first element (reading from top to bottom), the Opposition Division finds that the signs are visually similar to an average degree.
Aurally, the earlier sign, ‘HONDA’, and the distinctive element of the contested sign, ‘ONDA’, are identical, since the letter ‘H’ is silent in French. The signs differ in the pronunciation of the element ‘1962’ of the contested sign. However, since this element is neither distinctive nor dominant, it is probable that the relevant public will refer to the contested sign aurally simply as ‘ONDA’, which enhances the degree of similarity between the signs (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44; 03/07/2013, T-243/12, Aloha 100% natural, EU:T:2013:344, § 34). Therefore, the signs are aurally highly similar.
Conceptually, neither the earlier mark, ‘HONDA’, nor the verbal element ‘ONDA’ of the contested sign has a meaning. Bearing in mind the presence of the additional verbal and figurative elements of the contested sign, with the meanings explained above, albeit they are of limited distinctiveness, it is concluded that the signs are not conceptually 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 and 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.
- Global assessment, other arguments and conclusion
The goods and services are partly identical and partly similar to a low degree.
The conflicting signs are visually similar to an average degree and aurally highly similar. Although the contested sign includes additional verbal and figurative elements, these elements are of limited distinctiveness and the first and most distinctive element of the contested sign, ‘ONDA’, has significant similarities to the earlier mark, ‘HONDA’, these being elements that are aurally identical.
Therefore, the Opposition Division is of the view that the differences between the signs are not sufficient to safely rule out a likelihood of confusion for the relevant French-speaking public, even though it displays a higher than average degree of attention.
In addition, account is taken of the fact that 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).
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). This principle applies to the present case in relation to the goods and services that are identical and also in relation to the services that are similar to a low degree, given the relevant similarities between the signs.
Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 393. It follows that the contested trade mark must be rejected for all the contested goods and services.
The applicant argues that the conflicting marks are used for different products (outboard engines versus ships and boats) due to the different business areas of the parties and that its EUTM is reputed due to its long-standing use in Greece. To supports its allegations, it filed various pieces of evidence.
In the assessment of likelihood of confusion, the Office is bound by the goods and services listed in the registration certificate of the earlier mark and cannot analyse the actual use made of them. The same consideration applies to the contested goods and services. Furthermore, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.
Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.
The applicant also refers to a previous decision of the Board of Appeal to support its arguments (08/07/2003, R 691/2002-2, /).
However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the previous case referred to by the applicant is not relevant to the present proceedings, since the signs are not comparable. In contrast to the present case, the sign is stylised (the letters ‘M’ and ‘O’ are depicted with strokes extending from them) and in this sign the element ‘onda’ is preceded by the distinctive element ‘Mx’. Therefore, the applicant’s claim must be set aside.
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 abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
Finally, it should be noted that the opponent filed a declaration under Article 28(8) EUTMR in respect of its earlier European Union trade mark No 12 393, which is registered, inter alia, for the entire class headings of Classes 7, 12 and 37. This declaration has not been processed yet by the Office. Article 28(8) of the amending Regulation allows for a transitional period of six months during which proprietors of EU trade marks applied for before 22 June 2012, and registered in respect of the entire heading of a Nice class, may declare that their intention on the date of filing had been to seek protection in respect of goods and services beyond those covered by the literal meaning of that heading. In the present case, since the opposition is fully successful on the basis of the goods and services originally in the list of the earlier mark, there is no need to take into account the declaration regarding additional goods and services.
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 applicant 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.
The Opposition Division
Boyana NAYDENOVA | Frédérique SULPICE | 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.