XCELLERA | Decision 2722307
Date Published: Sep 24, 2017
OPPOSITION No B 2 722 307
PT. Elangperdana Tyre Industry, Jl. Elang, Desa Sukahati, Citeureup, Bogor 16810, Indonesia (opponent), represented by Banning Advocaten, Statenlaan 55, 5223, LA, 's-Hertogenbosch, The Netherlands (professional representative)
a g a i n s t
Zhuhai Antares Tires Co. Ltd., room 105-12529, no. 6 Baohua Street, Hengqin New Zone, Zhuhai City, Guangdong Province, People's Republic of China (applicant), represented by Guy Delhaye 2, rue Gustave de Clausade, 81800 Rabastens, France (professional representative).
On 22/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 722 307 is upheld for all the contested goods.
2. European Union trade mark application No 15 282 941 is rejected 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 15 282 941 for the figurative mark . The opposition is based on European Union trade mark registration No 4 360 012 for the word mark ‘ACCELERA’. 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 goods
The goods on which the opposition is based are the following:
Class 12: Tyres.
The contested goods are the following:
Class 12: Automobile tires (tyres); treads for retreading tires (tyres); adhesive rubber patches for repairing inner tubes; tires for vehicle wheels; aircraft landing wheels; repair outfits for inner tubes; treads for vehicle (roller belts); casings for pneumatic tires (tyres); inner tubes for vehicle wheels; vehicle tires.
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 contested automobile tires (tyres); tires for vehicle wheels; vehicle tires are included in the broad category of the opponent’s tyres in Class 12. Therefore, they are identical.
The contested treads for retreading tires (tyres); adhesive rubber patches for repairing inner tubes; aircraft landing wheels; repair outfits for inner tubes; casings for pneumatic tires (tyres); inner tubes for vehicle wheels are similar to a high degree to the opponent’s tyres in Class 12, as they can coincide in producer, end user and distribution channels. Furthermore, they are complementary.
The contested treads for vehicle (roller belts) are similar to the opponent’s tires in Class 12. These goods are considered to be complementary and are found in the same distribution channels; they also coincide in terms of end users.
- 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 or similar (to varying degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise, such as car manufacturers and automobile mechanics. The public’s degree of attention is considered to be above average, as they are in general infrequent purchases, their price could be high, the goods are quite specialised and some goods can have severe consequences on the safety, for example aircraft landing wheels.
- The signs
ACCELERA | |
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 mark is a word mark composed of the term ‘ACCELERA’.
The contested sign is a figurative one made up of the term ‘XCELLERA’, written in a black fairly standard typeface in bold italic capital letters.
The element ‘ACCELERA’ of the earlier mark might be perceived by a part of the relevant public as a reference to the word ‘accelerate’, for example by the English- speaking part of the relevant public, ‘acelerar’ by the Spanish-speaking part of the public, ‘accelerare’ by the Italian-speaking part of the public, among others, which means ‘to go, occur, or cause to go or occur more quickly; speed up’ (see Collins English Dictionary online). For another part of the public this word is meaningless. However, regardless of the above mentioned, the term as such in relation to the goods is considered to be distinctive.
The element ‘XCELLERA’ of the contested sign has no meaning. Consequently, the contested sign has no element which is clearly more distinctive.
Visually and aurally, the signs coincide in the letters/sound ‘(*)CEL(L)ERA’. The signs differ in the appearance and pronunciation of the beginnings, namely /AC-/ vs /X-/, respectively. Even though the earlier mark has a double letter ‘C’ and one letter ‘L’ versus one letter ‘C’ and double letter ‘LL’ in the contested sign, phonetically this has no bearing on its pronunciation in the majority of the languages of the EU, with the exception of, for example, Spanish. Regarding the typeface in which the verbal element of the contested sign is depicted, this stylisation is fairly standard and will not divert the consumer’s attention away from the element it seems to embellish.
Therefore, the signs are visually and aurally similar to a high degree.
Conceptually, although the earlier mark might be perceived by a part of the relevant public 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. For the remaining part of the pubic that will perceive the earlier mark as meaningless, the conceptual comparison is not possible, thus 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 did not explicitly claim that its mark 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.
- Global assessment, other arguments and conclusion
The goods have been found partly identical and partly similar (to varying degrees). The earlier mark has a normal degree of distinctiveness. The signs are visually and aurally similar to a high degree, whereas conceptually either not similar or the conceptual comparison does not influence the assessment of the similarity of the signs. The relevant public is the public at large and a more professional one, whose level of attention is above average.
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 (Lloyd Schuhfabrik, § 26). Having said that, it is stressed that 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).
Consequently, there is a likelihood of confusion with respect to identical and similar (to varying degrees) goods, even for the public with a higher level of attention.
Considering all of the above, the Opposition Division finds that 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 4 360 012. It follows that the contested trade mark must be rejected in its entirety.
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
Chantal VAN RIEL | Klaudia MISZTAL | Saida CRABBE |
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.