Motor vehicles and motor vehicle bodywork services held to be dissimilar

European Union
In Wind v Office for Harmonisation in the Internal Market (OHIM) (Case T-451/09, December 15 2010), the General Court has upheld a decision of the Board of Appeal of OHIM in which the latter had found that there was no similarity between goods in Class 12 and services in Class 37 of the Nice Classification.

On September 22 2003 Sanyang Industry Co Ltd, established in Hsinchu (Taiwan), filed an application for the registration of the figurative mark WIND as a Community trademark for, among other things, "ATVs, senior people carts, electric motorcycles, sports motorcycles, electric scooters, electric bicycles, motorcycles and their parts" in Class 12.

On January 25 2005 Harry Wind, residing in Selfkant (Germany), lodged an opposition against the application based on the earlier German figurative trademark WIND for "motor vehicle repair services" in Class 37. Sanyang Industry requested Wind to furnish proof of use.

The Opposition Division of OHIM rejected the opposition, reasoning that Wind had failed to prove genuine use of the trademark. In contrast, the Fourth Board of Appeal of OHIM ruled that Wind had proven genuine use of his mark for some of the services, namely "motor vehicle body work services". Nevertheless, the board dismissed the appeal, as it found that there was no similarity between "motor vehicle bodywork services" in Class 37 and "ATVs, senior people carts, electric motorcycles, sports motorcycles, electric scooters, electric bicycles, motorcycles and their parts" in Class 12.

The Eight Chamber of the General Court confirmed the Board of Appeal's decision based on the following findings:
  • There was a certain complementarity between the goods and services insofar as where damage has been caused to the bodywork of a vehicle, it has to be restored. This was not sufficient to find that the goods were similar.
  • The nature of the goods and services was different: goods are tangible, while services are intangible.
  • The intended use was different: motor vehicle bodywork services serve to restore damaged motor vehicles, while motor vehicles serve to transport and carry people.
  • Most importantly, the distribution channels were different: undertakings that exclusively provide motor vehicle bodywork services do not manufacture or sell motor vehicles. Motor vehicle manufacturers do not carry out bodywork services.
The average German consumer, who is reasonably well informed and reasonably observant and circumspect, would not be led to think that the provider of motor vehicle bodywork services is responsible for the manufacture of motor vehicles, or vice versa. Therefore, he or she would not think that such goods and services are offered under the same brand names.

This decision is in line with settled case law, under which there is usually no similarity between goods and services. Similarity will be found only in exceptional cases, for example where the goods are complementary. Complementary goods must be closely related, in that one is indispensable or important for the use of the other, so that consumers may think that the same undertaking is responsible for both (as is the case for printed matter on the one hand and publication services on the other, for example).
 
Tanja Hogh Holub, Beiten Burkhardt, Munich

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