WATT Stone | Decision 2697392

Date Published: Sep 25, 2017

OPPOSITION No B 2 697 392

Bridgestone Corporation, 1-1, Kyobashi 3-chome, Chuo-ku, Tokyo 104-8340, Japan (opponent), represented by Marks & Clerk LLP, 90 Long Acre London WC2E 9RA, United Kingdom (professional representative)

a g a i n s t

Acme Rubber Industry Co. Ltd., No. 45, Singong 6th Rd., TianjhongTownship  Changhua County  520, Taiwan (applicant), represented by Zeitler Volpert Kandlbinder Patent- und Rechtsanwälte Partnerschaft MBB, Herrnstr. 44, 80539, Munich, Germany (professional representative).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 697 392 is partially upheld, namely for the following contested goods:

Class 12:        Automobile tires [tyres]; casings for pneumatic tires [tyres]; inner tubes for pneumatic tires [tyres]; vehicle wheel tires [tyres]; steering wheels; vehicle seats; safety seats for use in cars; safety seats for children; mirrors for vehicles; windscreen wipers; vehicle wheel rims; seat covers for vehicles; head rests for use in vehicles; fenders and mudguards (for land vehicles); modular chassis systems for vehicles; petrol caps; suspension subsystems and components; shock absorbers; rear view mirrors; speed change gears; aero-dynamic fairings for vehicles; brake pads for land vehicles; brake shoes for land vehicles; directional signals for vehicles; door panels for land vehicles; air intake system.

2.        European Union trade mark application No 15 045 024 is rejected for all the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 045 024. The opposition is based on European Union trade mark registration No 13 316 161 and international trade mark registration No 1 105 946 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark registration No 13 316 161 and international trade mark registration No 1 105 946 designating the European Union

In the present case, the date of filing of the contested trade mark is 27/01/2016.

Earlier European Union trade mark registration No 13 316 161 was registered on 11/02/2015. Therefore, the request for proof of use is inadmissible.

As regards earlier trade mark No 1 105 946, this is an international registration designating the European Union. Article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the EU must be put into genuine use in the Union.

The date of publication pursuant to Article 152(2) EUTMR for the earlier trade mark at issue is 22/03/2012. Therefore, the request for proof of use is also inadmissible.

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.

1. The goods and services

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

European Union trade mark registration No 13 316 161

Class 12:        Automobiles and their parts and fittings; tires; retreaded tires; two-wheeled motor vehicles and their parts and fittings; bicycles and their parts and fittings; electric bicycles and their parts and fittings; aircrafts and their parts and fittings.

International trade mark registration No 1 105 946 designating the European Union

Class 1:        Rubber cement for use in retreading preformed tires; solvents; self-vulcanizing binder compositions and vulcanizing accelerator compositions all used in the repair of tires.

Class 6:        Metal junctions for pipes; metal flanges; water-pipe valves of metal; pipework of metal; antiseismic construction materials of metal; construction materials of metal; reinforcing materials of metal for building; metal hardware; reinforcing materials of metal for pipes; nuts of metal; industrial water storage tanks (of metal); water tanks of metal for household purposes; steel buildings; stainless-steel water tank; containers of metal; rubber covered metal chains for preventing bridge collapse; man-made garden ponds (metal structures).

Class 7:        Construction machines and apparatus; loading-unloading machines and apparatus; rubber tracks for use with crawlers on agricultural machinery; rubber tracks for use with crawlers on mining machinery; rubber tracks for use with crawlers on construction, cargo handling machinery; rubber pads to be attached to shoe plates of metal crawlers; rubber tracks machinery; rubber tracks for use with crawlers on construction, cargo handling machinery; rubber pads to be attached to shoe plates of metal crawlers; rubber tracks for use with crawlers on snow remover; parts and fittings for all the aforesaid goods; belts for conveyors; transmission belts not for land vehicles; belt conveyers; brakes for machines; hydraulic hoses, not of metal, for use in machines; non-metallic hoses for transferring hydraulic power in machines; non-metallic hoses for use in hydraulic systems in machines; hydraulic quick release couplings for high pressure hoses used in machines; plastics pipes (fitted parts of machines); hydraulic connectors (pipes) being parts of machines; tire repairing machinery; pressure chambers as parts of tire repairing machinery; tire buffers as parts of tire repairing machinery; tire tread rollers and stitchers, as parts of tire repairing machinery; tire tread cutters and bonding agent applicators used in recapping tires as parts of tire repairing machinery; pneumatic shock absorbers (air springs, for machine elements not for land vehicles); rubber springs for non-vehicular suspension systems.

Class 9:        Phase indicators; rubber covered electrical wires; electronic buzzers; solar batteries; facsimiles; electronic displays utilizing electronic paper technology; computers; rollers such as transfer roller, toner supply roller, development roller, etc. for printer, facsimile, copy machine; alarm devices for tire pressure; pressure gauges in vehicle tires; rubber testing machines; cameras; magnetic cores; gasoline gauges; gasoline pumps for service stations; cigar lighter for automobiles; protective masks; apparatus for consumer games adapted for use with an external display screen or monitor; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; weight belts for scuba diving; downloadable music files; downloadable image files; electronic publications; batteries, electric; batteries electric for vehicles; sunglasses.

Class 12:        Automobiles and their parts and fittings; tires for passenger cars; tires for trucks; tires for buses; tires for racing cars; tires for automobiles; retreaded tires for passenger cars; retreaded tires for trucks; retreaded tires for buses; retreaded tires for racing cars; retreaded tires; retreaded tires for automobiles; inner tubes for passenger cars; inner tubes for trucks; inner tubes for buses; inner tubes for racing cars; inner tubes for automobiles; wheels and rims for passenger cars; wheels and rims for trucks; wheels and rims for buses; wheels and rims for racing cars; wheels and rims for automobiles; tread rubber for retreading tires for the above-mentioned vehicles; two-wheeled motor vehicles and their parts and fittings; tires for two-wheeled motor vehicles; inner tubes for two-wheeled motor vehicles; wheels and rims for two-wheeled motor vehicles; bicycles and their parts and fittings; tires for bicycles; inner tubes for bicycles; wheels and rims for bicycles; aircraft and their parts and fittings; tires and inner tubes for aircraft; adhesive rubber patches for repairing tubes or tires; tread rubber for retreading tires for two-wheeled motor vehicles or bicycles; tread rubber for retreading tires for aircraft; tread used to retread tires; preformed tire tread; rubber patches for repairing vehicle tread; shock absorbers (for land vehicles); air springs for land vehicles; shaft couplings or connectors (for land vehicles); fenders for vessels (boat side protectors); seat cushions for vehicles; air springs for railway cars; vehicle bumpers; suspension shock absorbers for vehicles; suspension springs for vehicles; four-wheeled go-carts; tricycles for infants; tires for off-the-road vehicles; tires for scrapers; tires for motor graders; tires for shovel loaders; tires for tire rollers; tires for wheeled cranes; tires for cranes; tires for snow plows; tires for pavers; tires for mining machinery.

Class 17:        Valves of rubber or vulcanized fiber; flexible tubes not of metal; junction for pipes, not of metal; sealants for use in building and construction and insulation for use inbuilding and construction; floating anti-pollution barriers; packing containers of rubber; hydraulic hoses, not of metal; plastic substances, semi-processed; plastic sheets for use as interlayers for laminated glass; plastic films, not for wrapping; EVA (ethylene vinyl acetate) films for solar batteries; EVA (ethylene vinyl acetate) films for solar cells; urethane foam; thermoplastic elastomers used as materials for buffers of HDD; flexible pipes and tubes of plastic; flexible rubber tubes; laminated plastic films for use in electronic displays including plasma display panels and liquid crystal displays; adhesive-coated plastic sheets for solar cells; rubber; materials of rubber for seismic isolation; synthetic rubber; natural rubber; rubber compounds; rubber for retreading and repairing tires and repairing tubes; rubber material for recapping tires; gaskets; seals; waterproof membranes; gaskets of metal.

Class 18:        Shopping bags; bags for sports; rucksacks; travelling bags; handbags; wheeled shopping bags; net bags for shopping; purses; school bags; bags (envelopes, pouches) of leather for packaging; umbrellas; parasols; card cases; key cases leatherware; vanity cases not fitted.

Class 19:        Rigid pipes, not of metal (building); rubber building or construction materials; antiseismic construction materials, not of metal; rubber building materials for seismic isolation; non-metallic building materials; roofing and roofing waterproof membranes; non-metal bridge construction materials, covered with rubber; man-made garden ponds (structures, not of metal).

Class 20:        Valves, not of metal, other than parts of machines; tanks, not of metal nor of masonry; liquid storage tanks not of metal nor of masonry; gas storage tanks not of metal nor masonry; chests, not of metal; desks; chairs; mirrors; bathroom vanities (furniture); bookcases; cushions; pillows; mattresses; cases of wood; bamboo and plastic containers for packaging; fans for personal use, non-electric; water tanks for household purposes not of metal nor masonry; sleeping bags for camping; hairdresser's chairs; non-metal chains covered with rubber.

Class 24:        Towels of textile; handkerchiefs; labels (cloth).

Class 25:        Wind jackets; wristbands; golf shoes; golf spikes; cyclist's suits of jerseys for racing; cyclist's pants for racing; cyclist's overall; golf trousers; golf caps; golf shirts; golf pants; golf skirts; jackets; jogging pants; sweat pants; trousers; overcoats; raincoats; sweaters; sport shirts; camisoles; undershirts; underpants; vests; open-necked shirts; polo shirts; collar protectors; socks; scarfs; gloves; gloves for bicycling; neckerchieves; thermal underwear; mufflers; ear muffs; hats; caps (clothing); visors; sports shoes; walking shoes; shoes; gloves for bicycle racing; gloves for cycling.

Class 28:        Miniature cars; rubber balls; model vehicles; golf clubs; golf bags; golf balls; golf gloves; golf club heads; golf club head covers; golf irons; golf putters; golf equipment; sports bags shaped to contain specific sports apparatus; tennis rackets; tennis balls.

Class 35:        Retail services or wholesale services for automobiles, tires and parts and fittings for automobiles; retail services or wholesale services for sports goods; retail services or wholesale services for bicycles and parts and fittings for bicycles.

Class 37:        Repair and maintenance of automobiles and their parts; repair and maintenance of tires for automobiles; retreading of tires; repair and maintenance of two-wheeled motor vehicles and their parts; repair and maintenance of tires for two-wheeled motor vehicles; repair and maintenance of bicycles and their parts; repair and maintenance of tires for bicycles; repair and maintenance of tires for aircraft; tire repair and recapping services; roofing services; roof repair; roof installation, and maintenance.

The contested goods and services are the following:

Class 12:        Automobile tires [tyres]; casings for pneumatic tires [tyres]; inner tubes for pneumatic tires [tyres]; vehicle wheel tires [tyres]; steering wheels; vehicle seats; safety seats for use in cars; safety seats for children; mirrors for vehicles; windscreen wipers; vehicle wheel rims; seat covers for vehicles; head rests for use in vehicles; fenders and mudguards (for land vehicles); modular chassis systems for vehicles; petrol caps; suspension subsystems and components; shock absorbers; rear view mirrors; speed change gears; aero-dynamic fairings for vehicles; brake pads for land vehicles; brake shoes for land vehicles; directional signals for vehicles; door panels for land vehicles; air intake system.

Class 35:        Import/export agency services, information and consultancy services in relation to commercial retailing.

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.

An interpretation of the wording of the lists of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s and in the applicant’s lists of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Contested goods in Class 12

The contested automobile tires [tyres]; vehicle wheel tires [tyres]; pneumatic tires [tyres] are included in the broad category of the opponent’s tires covered by European Union trade mark registration No 13 316 161. Therefore, they are identical.

The contested casings for inner tubes for pneumatic tires [tyres]; steering wheels; vehicle seats; safety seats for use in cars; safety seats for children; mirrors for vehicles; windscreen wipers; vehicle wheel rims; seat covers for vehicles; head rests for use in vehicles; fenders and mudguards (for land vehicles); modular chassis systems for vehicles; petrol caps; suspension subsystems and components; shock absorbers; rear view mirrors; speed change gears; aero-dynamic fairings for vehicles; brake pads for land vehicles; brake shoes for land vehicles; directional signals for vehicles; door panels for land vehicles; air intake system are included in the broad category of, or overlap with, the opponent’s automobiles and their parts and fittings covered by earlier European Union trade mark registration No 13 316 161. Therefore, they are identical.

Contested services in Class 35

The contested information and consultancy services in relation to commercial retailing consist in the provision of advice that is tailored to the circumstances or needs of a particular user and that recommends specific courses of action for the user, as well as in providing a user with materials (general or specific) about, in this case, commercial retailing, but not advising the user on specific courses of action.

When providing the opponent’s retail services or wholesale services for automobiles, tires and parts and fittings for automobiles covered by international trade mark registration No 1 105 946 designating the European Union it cannot be excluded that the contested services might also be offered since these services are often complementary. In view of the fact that the relevant public and the distribution channels can also coincide, a part of their origin, the Opposition Division deems that these services are similar.

The contested import/export agency services are not considered to be a sales service. Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods. For these reasons, all the goods and services covered by the earlier trade marks are to be considered dissimilar to import and export services. This is valid for the goods in Classes 1, 6, 7, 9, 12, 17, 18, 19, 29, 24, 25 and 28 covered overall by both earlier rights, since the fact that the subject matter of the import/export services and the goods in question might the same is not a relevant factor for finding a similarity, but also as concerns the opponent’s services in Classes 35 and 37, since nature, origin, intended purpose, distribution of these services are not the same. Neither are they complementary or in competition.

Finally, in view of the specificity of the present opposition, a comparison must be done also as concerns the opponent’s goods covered by European Union trade mark registration No 13 316 161 and the contested services in Class 35. In this case, the opponent’s goods, namely automobiles and their parts and fittings; tires; retreaded tires; two-wheeled motor vehicles and their parts and fittings; bicycles and their parts and fittings; electric bicycles and their parts and fittings; aircrafts and their parts and fittings in Class 12 on one hand and Import/export agency services, information and consultancy services in relation to commercial retailing  in Class 35 on the other do not display any point of contact. These goods and services differ in their nature, usual origin, intended purpose and distribution channels. They are neither complementary, nor necessarily in competition. It follows that they must be considered dissimilar.

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 identical or similar are directed at the public at large and also at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, the specialised nature of the goods, or terms and conditions of the purchased goods and services.

In particular, taking into consideration the price of some parts and accessories of cars, and also considering that safety when driving might be of some concern in relation to some of the goods, consumers are likely to pay a higher degree of attention than for less expensive purchases.

3. The signs

STONE (EUTM 13 316 161) (international trade mark registration No 1 105 946 designating the European Union)	WATT Stone
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 earlier European Union trade mark registration No 13 316 161 is a word mark consisting of the word ‘STONE’. The earlier international trade mark registration No 1 105 946 designating the European Union is a figurative mark consisting of the word ‘BRIDGESTONE’ depicted in fanciful black characters. The contested sign consists of the words ‘WATT Stone’.

For a part of the public, as for instance for the English-speaking consumers, the signs have a meaning, since they will recognize the words ‘STONE’ per se and within the word ‘BRIDGESTONE’ (‘a piece of rock or hard mineral substance’), but also the word ‘WATT’ (as, inter alia, a unit of measurement of electrical power) and ‘BRIDGE’ (as, inter alia, ‘a structure carrying a road, path or railway’).

For another part of the relevant public, such as the Spanish-, Italian-, Polish-speaking consumers, the signs have no meaning, with the exception of the word ‘WATT’ of the contested sign, which will be also understood as explained above.

As the elements of the signs have no meaning for the relevant public or they are not descriptive, allusive or otherwise weak for the relevant goods and services, they are all distinctive.

The earlier international trade mark registration No 1 105 946 designating the European Union has no elements that could be considered clearly more dominant than other elements.

Also, in particular as regards earlier international trade mark registration No 1 105 946, account must be taken on the fact that consumers generally tend to focus on the beginning of a sign, which in this case might be the word or letters ‘BRIDGE’, 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 earlier European Union trade mark registration No. 13 316 161 and the contested sign coincide in the distinctive element ‘STONE’. However, they differ in the additional and distinctive word ‘WATT’ of the contested sign. Therefore, these signs are deemed to be visually similar to an average degree.

As regards the earlier international trade mark registration No 1 105 946 designating the European Union, it coincides with the contested sign to the extent that they share the letters ‘STONE’, although in the case of the earlier international trade mark registration No 1 105 946  depicted in a different manner. In view of the fact that these signs also differ in the first letters ‘BRIDGE-‘ of the earlier sign, in its graphic arrangement and in the additional word ‘WATT’ of the contested sign, they are deemed to be visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier European Union trade mark registration No. 13 316 161 and the contested sign coincide in the pronunciation of distinctive element ‘STONE’. However, they differ in the additional and distinctive word ‘WATT’ of the contested sign. Therefore, these signs are deemed to be aurally similar to an average degree.

As regards the earlier international trade mark registration No 1 105 946 designating the European Union, it shares the letter ‘STONE’ with the contested sign. In view of the fact that these signs also differ in the first letters ‘BRIDGE-‘ of the earlier sign and in the additional word ‘WATT’ of the contested sign, they are deemed to be aurally similar to a low degree.

Conceptually, account must be taken on the fact that signs are conceptually identical or similar when the two signs are understood as meaning the same thing or something similar, respectively. In this case, the signs are conceptually similar to an average degree for English-speaking consumers to the extent that they share the concept of ‘stone’. The same part of the relevant public will perceive a conceptual dissimilarity between the signs with regard to the word ‘BRIDGE’ of the earlier mark and ‘WATT’ in the contested sign. For another part of the relevant public who do not speak English, the signs are not conceptually similar to the extent that the contested sign contains the meaningful word ‘WATT’. Finally, it cannot be excluded that a part of the relevant public will not perceive any meaning and therefore, for those consumers, a conceptual comparison does not influence the assessment of 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.

4. Distinctiveness of the earlier marks

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 did not explicitly claim that its European Union trade mark registration No 13 316 161 is particularly distinctive by virtue of intensive use or reputation.

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.

However, according to the opponent the earlier international trade mark registration No 1 105 946 designating the European Union enjoys a high degree of distinctiveness as result of its long standing and intensive use in the European Union. In its claim of 30/11/2016, the opponent has not specified in connection with which of the goods and services its marks enjoys a high degree of distinctiveness. The Opposition Division will consider this claim as referring to all the goods and services for which the mark is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

On 30/11/2016, the opponent submitted the following evidence:

• Articles taken from the opponent’s webpage and other webpages, dated in the years 2015 and 2016 in which information is contained about the opponent’s activity of sponsorship of sporting events such as the ‘MotoGP’ or the ‘ADAC Zurich 24-hour race’. All the evidence is in English.

• Six extracts taken from the opponent’s ‘News Release, dated in the period comprised between the year 2013 and the year 2016 in which information is given about international awards won by ‘Bridgestone’ for the excellence of its tyres.  These extracts are all written in English.  

The Court has given some guidance in respect of the evaluation of distinctiveness acquired through use of the earlier mark and provided a non-exhaustive list of factors:

In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

(Judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23)

The evidence derives in its vast majority directly from the opponent. Even though this evidence cannot be disregarded, it needs to be supported by additional, independent evidence, such as statements from the chamber of trade, proof showing the opponent’s participation in trade fairs and exhibitions, statements from customers, independent press articles published in specialised literature, surveys, etc.

Furthermore, the submitted evidence does not provide any information on the eventual use of the sign on the relevant territory and are not sufficiently supported by any evidence from independent sources.

The evidence submitted does not show whether there is any degree of recognition of the earlier mark in the mind of the consumer, as this does not point to whom (how many people) the information provided by the opponent was circulated to. There is no information on turnover or market figures that could lead to a conclusion that the mark is present on the relevant market and that it has acquired a degree of recognition. It follows that the opponent failed to demonstrate that the earlier mark has acquired a high degree of distinctiveness.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Consequently, the assessment of the distinctiveness of the international trade mark registration No 1 105 946 designating the European Union 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.

5. Global assessment, other arguments and conclusion

For reasons of procedural economy, the Opposition Division will firstly draw a conclusion from the perspective of the European Union trade mark registration No. 13 316 161. In this case, the goods and services covered by this earlier right and the goods and services covered by the contested application have been found partly identical and partly dissimilar. The signs are similar to an average degree both from a visual and aural perspective, and from a conceptual perspective, for a part of the public, to an average degree as well. The earlier mark ‘STONE’ is fully incorporated within the contested sign ‘WATT Stone’.

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).

Also, 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).

As the goods in Class 12 are identical and due to the absence of any dominant or non-distinctive elements in the signs, a likelihood of confusion exists.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark ‘WATT Stone’ as a sub-brand, a variation of the earlier mark ‘STONE’, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 316 161.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier European Union trade mark registration No 13 316 161.

The rest of the contested services are dissimilar to the goods covered by European Union trade mark registration No 13 316 161. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

However, as seen above in section a) of the present decision, some the contested services in Class 35 have been found similar to some of the services covered by earlier international trade mark registration No 1 105 946 designating the European Union. Accordingly, an assessment must be also given insofar as the opposition is also based on this earlier right.  

As regards this earlier mark, account must be taken that it has been found visually and aurally similar to the contested sign only to a low degree. It is true that there is, at least from the perspective of the English-speaking consumers, a conceptually link due to the presence of the recognisable word ‘Stone’. Though, regarding these signs now taken into account, the difference in the first elements ‘BRIDGE-’ and ‘WATT’ is clearly noticeable. The beginning of a sign can make a significant difference to the consumer’s perception of it. In the present case, the elements ‘BRIDGE’ and ‘WATT’ effectively constitute the first half of the marks. They are not merely common banal prefixes attached to the front of long, elaborate marks.

These elements of the signs will not escape the attention of the consumer. The marks are simple ones and the first parts of the signs are not camouflaged in any way by the overall complexity or length of the signs. Bearing that in mind and the fact that these two elements, ‘BRIDGE-’ and ‘WATT’, have no point of connection, visually, aurally or conceptually, the conclusion is that the consumer will have no difficulty distinguishing between the marks in question. As seen above, the marks are linguistically related, due to the word ‘STONE’, which they have in common, but taken as a whole they are not close relatives.

Therefore, taking into account all the relevant circumstances of the case when comparing earlier international trade mark registration No 1 105 946 designating the European Union, as well as the principle of interdependence between the various relevant factors (some of the services in Class 35 have been found only similar but not identical), the Opposition Division concludes that the visual and aural differences between the beginnings of the marks at issue are striking enough that they will enable the targeted public in the European Union to avoid a likelihood of confusion, including a likelihood of association.

Considering all of the above, the Office finds that there is no likelihood of confusion within the meaning of Article 8(1)(b) CTMR on the part of the public. Therefore, the opposition must be rejected insofar as it is based international trade mark registration No 1 105 946 designating the European Union.

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 opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Orsola LAMBERTI

Andrea VALISA

Janja FELC

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.