EUIPO - RENAULT SAS v/ AL ASWAR AUTO SPARE PARTS TRADING CO.
Date de la décision
N° de la décision
12 097 C
Type de jurisprudence
Cancellation Division of the EUIPO
RENAULT SAS v/ AL ASWAR AUTO SPARE PARTS TRADING CO.
RENAULT SAS was represented by Cristina Bercial-Chaumier, Attorney at law assisted by Marie Pusel, French and European Trademark Attorney.
The matter opposed RENAULT SAS against AL ASWAR AUTO SPARE PARTS TRADING CO. RENAULT filed an invalidity action against Al Aswar’s EUTM Registration.
The marks involved were MASTER (Prior word mark) (French Registration No. 1551948) vs the figurative mark MasterMs AUTOMOTIVE (EUTM application No. 12 877 106).
The basis of the action was the likelihood of confusion with Prior French Registration MASTER in connection with motor vehicles, vehicles for locomotion by land, their spare parts or replacement parts not included in other classes in class 12 pursuant to Article 8(1)(b) EUTMR. The applicant also invoke the enhanced distinctiveness of the Prior Mark in France.
The contested goods were vehicles, apparatus for locomotion by land, air or water in class 12.
Even if an enhanced distinctiveness of the prior mark was invoked, for reasons of procedural economy, the Cancellation Division found that even considering an average degree of distinctive character, the distinctiveness per se of the Prior mark was sufficient for the action to be upheld.
Indeed it was found that in the present case, given the identity of the goods and the fact that the earlier mark was entirely contained in the contested sign, it was likely that consumers would perceive the contested sign as a variation of the earlier mark such as a modernized version of the mark, used to designate a new line of products.
In view of the above, the Cancellation Action was found to be partially well-founded on the basis of the applicant’s French Trademark Registration MASTER.
The Cancellation Division declared invalid the challenged registration for vehicles and apparatus for locomotion by land by considering that the signs were similar and the action was upheld in connection with all the goods found identical and similar.
The action was however rejected for the goods considered to be dissimilar and it was stated that this even if the earlier mark had been considered as enjoying an enhanced distinctiveness, given the fact that the similarity of the goods cannot be overcome by the higher distinctive character of the earlier mark.