X-OBD | Decision 2662644 - COMPAGNIE GÉNÉRALE DES ÉTABLISSEMENTS MICHELIN v. Qiang Liu
Date Published: Sep 28, 2017
OPPOSITION No B 2 662 644
Compagnie Générale des Établissements Michelin, 12, cours Sablon, 63000 Clermont-Ferrand, France (opponent), represented by Jacobacci & Partners, S.L.U., Calle Génova, 15 - 1°, 28004 Madrid, Spain (professional representative)
a g a i n s t
Qiang Liu, Building 612, Bagua Second Rd, Futian District, Shenzhen City, Guangdong, People's Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).
On 03/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 662 644 is upheld for all the contested goods and services, namely
Class 12: Vehicle wheel tires; inner tubes (Adhesive rubber patches for repairing -).
Class 37: Tires (retreading of -); tyre maintenance and repair; tyre balancing; tires (vulcanization of -).
2. European Union trade mark application No 14 809 198 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 809 198, namely against some of the goods and services in Classes 12 and 37. The opposition is based on, inter alia, international trade mark registration No 150 125 designating the Benelux countries, the Czech Republic, Spain, Italy, Hungary, Portugal, Romania, Slovenia and Slovakia. 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 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 international trade mark registration No 150 125 designating the Benelux countries, the Czech Republic, Spain, Italy, Hungary, Portugal, Romania, Slovenia and Slovakia.
- The goods and services
The goods on which the opposition is based are the following:
Class 12: Envelopes, inner tubes for pneumatic tyres [tyres].
The contested goods and services are the following:
Class 12: Vehicle wheel tires; inner tubes (Adhesive rubber patches for repairing -).
Class 37: Tires (retreading of -); tyre maintenance and repair; tyre balancing; tires (vulcanization of -).
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 vehicle wheel tires are similar to a high degree to the opponent’s inner tubes for pneumatic tyres [tyres]. These sets of goods are complementary in the sense that one is indispensable (essential) or important (significant) for the use of the other, because the latter are located inside the former once inflated. In addition, these sets of goods normally coincide in producers and relevant public, namely pneumatic manufacturers and automotive industry.
Likewise, the contested inner tubes (Adhesive rubber patches for repairing -) are goods used to repair inner tubes. They are similar to a high degree to the opponent’s inner tubes for pneumatic tyres [tyres], as these sets of goods are complementary and can coincide in producers, distribution channels and relevant public.
Contested services in Class 37
The contested tires (retreading of -); tyre maintenance and repair; tyre balancing; tires (vulcanization of -) are similar to the opponent’s goods. In fact the opponent’s goods are products used in the process of repair and maintenance of tyres and it is a common practice nowadays that a tyre maintenance and repair service provider would also offer to its clients its own house-branded products. Therefore, both sets of goods and services can be aimed at the same relevant public and may be distributed /offered through the same channels of trade. Moreover, the use of the one could be indispensable for the use of the other.
- 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 high and normal degree) are directed at the public at large and at professional business customers with specific professional knowledge or expertise. The degree of attention is likely to be higher than average, as these goods/services are not purchased frequently and may have specialised nature and require more in-depth research before purchase.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is the Benelux countries, the Czech Republic, Spain, Italy, Hungary, Portugal, Romania, Slovenia and Slovakia.
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).
Both marks are figurative. The earlier mark consists of a standard bold letter ‘X’ and the contested sign consists of the hyphenated elements ‘X-OBD’, wherein the letter ‘X’ is bigger than the remaining standard-script letters and one of its branches is elongated.
The element ‘X’ included in the signs is an alphabet letter and will be widely perceived as such, as it is part of the alphabets of the relevant territories. The letter ‘X’ in the signs has no descriptive/allusive or otherwise weak meaning in relation to the relevant goods and services and its inherent distinctiveness is normal. Therefore, the inherent distinctive character of the earlier mark is normal.
The letter combination ‘OBD’ included in the contested sign stands for ‘on-board diagnostics’, an automotive term referring to a vehicle’s self-diagnostic and reporting capability system. This technology was introduced in 1980 and various Directives and Regulations from EU were implemented for regulating OBD adoption (such as Commission Regulation (EC) No 692/2008 and Commission Regulation (EC) No 459/2012, Regulation No 83 of the Economic Commission for Europe of the United Nations). The term ‘OBD’ is widely used in the relevant sector in the relevant territories and will be readily understood at least by the professional part of the public. In particular, the public will perceive the term ‘OBD’ in relation to the relevant goods/services as an indication referring to self-diagnostic tools and services for tyres. Consequently, since the term has a descriptive meaning in relation to potential characteristics of the relevant goods/services, it is considered that the inherent distinctiveness of this element is limited as regards at least the professional part of the relevant public. For those members of the public, for which the term ‘OBD’ has no meaning, its inherent distinctiveness is normal.
The marks have no element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letter ‘X’, which comprises the only and the distinctive element of the earlier mark and the first and clearly recognizable element within the contested sign. The signs differ in the stylisation of the letter ‘X’ in the signs, which is, however, not particularly memorable or complex and the letters ‘X’ in the signs appear similar overall. In addition, the contested sign contains the additional verbal elements ‘OBD’, separated by a hyphen from the bigger initial letter ‘X’. Apart from this somehow subordinate role, it should be remembered that the element ‘OBD’ of the contested sign has a limited distinctiveness for at least the professional part of the relevant public. Therefore, the letter ‘X’ of the mark applied for carries more weight in the comparison of the marks at issue than the element ‘OBD’.
Last but not least, account is taken of the fact that the coincidence in the signs appears in the beginning of the contested sign. 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.
Accordingly, in view of the above-mentioned, it is considered the signs are visually similar to an average degree.
Following the same line of reasoning as in the visual comparison, it is considered that the signs are aurally similar to an average degree.
Conceptually, as mentioned above, the earlier mark contains the concept of the letter ‘X’. The contested sign contains the same concept and, for at least part of the public, the additional concept of ‘OBD’, which has no counterpart in the earlier mark, but is of limited distinctiveness in the context of the relevant goods and services in relation to at least part of the public. Therefore, as the signs will be associated with a similar meaning on account of the concept of the letter ‘X’ and, as the impact of the concept of the word ‘OBD’ is limited (or it will not bring about any particular meaning), the signs are conceptually similar to a high degree.
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 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 contested goods and services are similar to a high and normal degree and are directed both at the public at large and at professional customers. The degree of attention is higher than average.
The earlier trade mark and the contested sign are visually and aurally similar to an average degree and conceptually similar to a high degree.
The similarities between the signs are on account of the common and normally distinctive element ‘X’, which constitutes the only and distinctive element of the earlier mark and the initial and, for at least part of the public, the most distinctive element of the contested sign.
In view of the similarity of the goods and services concerned, the similarity between the contested mark and the earlier trade mark and the normal inherent distinctiveness of that earlier trade mark, it must be held that there is a likelihood of confusion, even if the relevant public’s degree of attentiveness is high.
The Opposition Division highlights the fact that, even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUTMR, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes owing to their similarities that they are derived from the same undertaking or indeed an economically-linked undertaking. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, there is a likelihood of confusion on the part of the public, especially the part of the public that will perceive a descriptive meaning in the term ‘OBD’. Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 150 125. It follows that the contested trade mark must be rejected for all the contested goods and services.
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 right IR No 150 125 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.
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
Marzena MACIAK | Liliya YORDANOVA | Dorothée SCHLIEPHAKE |
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.