JAGUAR Takes on CarJager: EUIPO Trademark Dispute

”The contested sign is represented in a combination of upper- and lower-case letters. Where a word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), this must be taken into account. Pursuant to Article 3(2) EUTMIR, the representation of the trade mark defines the subject matter of the registration.

The perception of the relevant public, who will not fail to notice the use of irregular capitalisation, also cannot be disregarded. In the present case, consumers will easily identify the verbal elements ‘car’ and ‘jager’ within the contested sign.

The word ‘Car’ will be associated with ‘a motor vehicle’ by at least a part of the relevant public, on which the focus of this assessment will remain following the above reputation analysis. This public is formed, by way of example, by the Irish consumers and other EU consumers with at least a basic apprehension of English throughout the EU, including significant part of the German and Dutch consumers.

This approach is in line with the well-established unitary character of the European Union trade mark, according to which the contested application may be rejected 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.

Considering the nature and characteristics of some of the services in Classes 35, 36, 37 and 39, the word ‘Car’ is completely void of distinctiveness insofar as they concern services related to or involving vehicles, or at most of a weakly distinctive character where this is only suggested and/or indicative of the characteristics of the services. For the remaining services (e.g. some of the services in Classes 35 and 36), the word is distinctive as it does not directly or indirectly indicate any obvious relation with these services.

The word ‘Jager’ is meaningless and distinctive as such for the public under assessment. It may be nevertheless associated by some of the public with the word ‘Jäger’, meaning ‘a hunter’ in German. It cannot be excluded, as both parties speculate, that the word can be associated by English speakers with a play of words, suggesting associations with a ‘car-jacker’, or with the English singer Mick Jagger. Even so, it remains of a distinctive character within the sign.

For the purposes of this comparison and bearing in mind that similarities between signs are higher from the perspective of the relevant public that finds the word ‘JAGER’ meaningless, the Opposition Division will proceed with the assessment from this perspective as this is the most advantageous scenario for the opponent.

The word ‘JAGUAR’ will be understood throughout the EU, due to the identical or very close equivalents (as regards its meaning in English), as a reference to a large wild animal of the cat family with dark spots on its back. Since the word bears no descriptive or allusive connotations in relation to the reputed goods in Class 12 (cars), it is considered distinctive.

While the signs are conceptually not similar, visually and aurally, they coincide in the letters ‘*JAGR’ and differ, respectively, in the initial part ‘CAR’ of the contested sign (with no counterpart in the earlier mark), and ‘UA’ versus ‘E’ between the coinciding letters or sounds of the signs.

It has to be noted that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

When the initial letters of the signs are different, this is a factor to be taken into account as well. This is because consumers read 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. In the present case, albeit the word ‘CAR’ is in first position, for a part of services, its impact is very limited, if any, as mentioned above, due to its allusiveness or descriptiveness. This has to be accordingly taken into account when comparing the signs, especially since the conflicting verbal parts remain ‘JAGUAR’ versus ‘JAGER’.

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs.

The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66).

It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria. The question as to whether the relevant public will make a connection between the marks at issue is a question of fact which must be answered in the light of the facts and circumstances of each individual case (22/05/2012, T-570/10, Tête de loup, EU:T:2012:250, § 42).

First, it has to be taken into account that the more distinctive the earlier mark, the greater the likelihood of establishing an association in the mind of consumers. As has been seen above, the earlier mark enjoys reputation in relation to cars. Moreover, it is based on an inherently distinctive term that has no connotation as regards the automotive industry.

This can respectively make the link with a similar verbal element even higher. Additionally, account is taken of the fact, that the circles among which the earlier mark is reputed may to a great extent be familiar with the nickname of the brand as ‘JAG’. This is another factor that the Opposition Division considers particularly relevant in the present case since these three letters are precisely at the beginning of the contested sign.

Second, in view of the opponent’s reasoning, the Opposition Division notes that a part of the services for which the applicant seeks protection are indeed strongly related to or involve vehicles as main subject of the service. Indeed, these services will be aimed at professional public, as well as at the public at large interested in obtaining a vehicle or maintaining one.

By way of example, some of the services directly relate to vehicles as subject of trade or rental/lease (retail/wholesale/actioning of vehicles in Class 35, as well as lease and rental in Class 39), while others may be seen as after-sale services (all the services in Class 37 related to repair, installation, transformation and maintenance of vehicles and/or parts thereof or garage or storage of vehicles in Class 39), or simply complementary services whenever they are related to the purchase of a vehicle or the broader categories thereof (e.g. services in Class 36 related to vehicle insurance or financing a vehicle purchase, parking services in Class 39, transportation for vehicles upon request in Class 39).

These services will in that case target the same relevant public among which the earlier mark is reputed – purchasers of vehicles, and will be offered through the same distribution channels, e.g. show rooms of the vehicles together with the sale contracts, car owners or people interested in temporarily obtaining control over a vehicle.

Consequently, despite the conceptual dissimilarity arising from the clear and unambiguous meaning of the earlier mark, an association between the contested sign and the earlier trade mark cannot be ruled out, especially taking into account that the verbal element ‘Jager’ of the contested sign, which will be independently perceived and remains the more/most distinctive element of the sign (at least for a part of the services), is meaningless for the consumers.

The incorporation of similar letters and sounds of the earlier mark (‘JAG*R’) into that element remains a strong trigger, which, on the basis of the reputation that the opponent’s mark has acquired in the automotive sector (corroborated with the familiarity of the public with the nickname ‘JAG’ of the brand), will be sufficient to bring the earlier mark into consumers’ minds when they encounter the sign applied for services related to the automotive sector.

Therefore, taking into account and weighing up all the relevant factors of the present case, it must be concluded that, when encountering the contested mark, the relevant consumers under assessment will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs.

As to the remaining services not mentioned above, it is concluded that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected insofar as these services are concerned.

Although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T 301/09, Citigate, EU:T:2012:473, § 96). Consequently, the assessment will proceed now with respect to the services for which a link has been established.

The goods and services of the opponent are clearly dissimilar to any of the remaining contested services since they show no Canon criteria in common (nature, purpose, method of use, relevant public, distribution channels, complementarity, or competition relationship). Particularly, these services are meant for undertakings that need to boost their businesses via different marketing strategies, or to such undertakings interested in business management and administration services.

These are evidently different from the target public of the opponent’s goods and services. Moreover, they will have completely different distribution channels and origin. They are not complementary in any way, neither do they share any common purpose.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since goods and services of these earlier marks are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected insofar as these remaining services are concerned.

This finding would still be valid even if the earlier trade mark/s were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark/s, the evidence submitted by the opponent in this respect does not alter the outcome reached above.”

OPPOSITION Nо B 3 041 467