VOLANT | Decision 2773011
Date Published: Sep 22, 2017
OPPOSITION No B 2 773 011
Aston Martin Lagonda Limited, Banbury Road Gaydon, Warwick CV35 ODB, United Kingdom (opponent), represented by Lewis Silkin LLP, 5 Chancery Lane, Clifford's Inn, London, EC4A 1BL, United Kingdom (professional representative)
a g a i n s t
Best Choice International Trade Co. Ltd., Third Floor of North Anhua Mansion, No. 8 Yinghua West Street, Chaoyang District, Beijing 100029, People's Republic of China (applicant), represented by Gastão da Cunha Ferreira LDA., Rua dos Bacalhoeiros nº. 4, 1100-070 Lisboa, Portugal (professional representative).
On 12/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 773 011 is upheld for all the contested goods.
2. European Union trade mark application No 15 315 757 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 of European Union trade mark application No 15 315 757 . The opposition is based on European Union trade mark registration No 2 405 314 ‘VOLANTE’. The opponent invoked Article 8(1)(b) and 8(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 goods
The goods on which the opposition is based are the following:
Class 12: Motor land vehicles and parts and fittings therefor; but not including steering wheels.
The contested goods are the following:
Class 12: Inner tubes for pneumatic tyres; Tyre casings; Tyre treads for retreading of tyres; Pneumatic tires [tyres], Solid tyres for land vehicle wheels; Tires for vehicle wheels; Tyres for motor vehicles; Tyres for aircraft.
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
The contested inner tubes for pneumatic tyres; tyre casings; tyre treads for retreading of tyres; pneumatic tires [tyres], solid tyres for land vehicle wheels; tires for vehicle wheels; tyres for motor vehicles are included in the broad category parts and fittings therefor(motor land vehicles), but not including steering wheels. Therefore, they are identical.
The contested tyres for aircraft are parts for aircrafts whereas the opponent’s goods are motor land vehicles and parts and fittings therefor; but not including steering wheels. They differ in end user, the public at large vs. professionals within the aviation sector, and distribution channels and are not complementary or in competition. However, they are manufactured by the same producer and have the same nature and purpose. Therefore, they are considered similar to a low degree.
- 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 are directed at the public at large, at professionals within the field of motor land vehicles and the aviation sector. The degree of attention will vary from average to high, depending on the price, frequency of purchase and safety requirements of the goods.
- The signs
VOLANTE | |
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.
When assessing the similarity of the signs, an analysis of whether the coinciding components (or sequences of letters) 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 verbal elements ‘VOLANT’ and ‘VOLANTE’ are not meaningful in certain territories, for example, in those countries where Spanish, French, Italian and German is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the relevant public.
The element ‘VOLANTE’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.
The contested sign consists of the verbal element ‘VOLANT’, depicted in bold black capital letters with only the letter ‘A’ being slightly stylised. The element ‘VOLANT’ of the contested mark has no meaning for the relevant public and is, therefore, distinctive.
Visually, the signs coincide in the string of letters ‘VOLANT’, being the entire verbal element of the contested sign and the first six out of seven letters of the earlier mark. The signs differ merely in the contested sign’s slight stylisation and the earlier sign’s additional letter ‘E’ which have no counterparts in the other sign.
Therefore, the signs are highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛VOLANT’, present identically in both signs. The pronunciation differs only in the sound of the letter ‛E’ of the earlier mark which has no counterpart in the contested mark.
Therefore, the signs are highly similar.
Conceptually, neither of the signs has a meaning for the relevant part of the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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.
The opponent claimed that the earlier trade mark is reputed but did not file any evidence in order to prove such a claim.
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
The goods are partly identical and partly similar to a low degree. The signs are visually and aurally highly similar.
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).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-speaking part of the public. This applies even for the goods which were found to be similar to a low degree, because of the high degree of visual and aural similarity between the signs. Therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 405 314: 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.
It follows from the above that the contested trade mark must be rejected in its entirety.
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.
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 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
Irina SOTIROVA | André Gerd Günther BOSSE | Plamen IVANOV |
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.