OPPOSITION No B 2 686 601

Walberg Urban Electrics GmbH, Alter Wandrahm 6, 20457 Hamburg, Germany (opponent), represented by Nesselhauf Rechtsanwälte, Alsterchaussee 40, 20149 Hamburg, Germany (professional representative)

a g a i n s t

Klever Mobility Inc., no. 4-1-6-8, ln. 76, sec. 3, zhongyang rd., tucheng dist., new taipei city  236, Taiwán (applicant), represented by Cabinet Germain & Maureau, 12, rue boileau, 69006 Lyon, France (professional representative).

On 01/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 686 601 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 177 132 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 177 132. The opposition is based on European Union trade mark registration No 13 105 309.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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 12:         Electrically operated two-wheeled vehicles, in particular electric motor scooters, electrically operated scooters, electric bicycles and electric kickboards; apparatus for locomotion by land, air or water, parts and fittings for all of the aforesaid goods, included in this class, other than tyres, solid rubber tyres, inner tubes for tyres.

Class 28:         Non-electric kickboards and stunt scooters.

Class 35:         Retailing and wholesaling, including via the internet, in the fields of protective helmets, electric lamps, electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards, fittings and parts for electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards, electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards, in particular helmets, luggage, bags, wallets and other carrying cases, leather and imitations of leather, clothing, protective clothing, in particular vests, head guards, elbow guards, knee guards, shin guards, footwear, headgear, belts, replacement and wear parts for electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards, in particular batteries and spare tyres, non-electric kickboards and stunt scooters

The contested goods and services are the following:

Class 12:         Motorcycles; electric motorcycles; automobiles; electric automobiles; utility vehicles; electric utility vehicles; all terrain vehicles; electric all terrain vehicles; mobility scooters; electric mobility scooters; bicycles; electric bicycles; parts and fittings of the aforesaid goods

Class 35:         Retail of automobile and parts and accessories thereof; retail of electric automobile and parts and accessories thereof; retail of motorcycles and parts and accessories thereof; retail of electric motorcycles and parts and accessories thereof; retail of bicycles and parts and accessories thereof; retail of electric bicycles and parts and accessories thereof

Class 37:         Repair and maintenance of automobiles, electric automobiles, motorcycles, electric motorcycles, bicycles and electric bicycles

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 motorcycles; electric motorcycles; automobiles; electric automobiles; utility vehicles; electric utility vehicles; all terrain vehicles; electric all terrain vehicles; mobility scooters; electric mobility scooters; bicycles; electric bicycles; parts and fittings of the aforesaid goods are included in the broad category of the opponent’s apparatus for locomotion by land, parts and fittings for all of the aforesaid goods, included in this class. Therefore, they are identical.

Contested service in Class 35

The contested; retail of electric motorcycles and parts and accessories thereof;; retail of electric bicycles and parts and accessories thereof are included in the broad category of the opponent’s retailing and wholesaling, including via the internet, electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards, fittings and parts for electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards. Therefore, they are identical.

The contested retail of motorcycles and parts and accessories thereof; retail of bicycles and parts and accessories thereof are considered highly similar to the opponent’s retailing and wholesaling, including via the internet, electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards, fittings and parts for electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards.

The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use

Furthermore, the goods in question are commonly retailed in the same outlets, and therefore they also coincide in relevant public and distribution channels.

The contested retail services related to automobile and parts and accessories thereof; retail of electric automobile and parts and accessories thereof  are considered similar to the opponent’s retail services related to electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, fittings and parts for electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they coincide in relevant public and distribution channels.

Contested services in Class 37

The contested repair and maintenance of automobiles, electric automobiles, motorcycles, electric motorcycles, bicycles and electric bicycles are similar to the opponent’s apparatus for locomotion by land, parts and fittings for all of the aforesaid goods, included in this class as they can coincide in producer, end user and distribution channels since it is common in the market that the producer of vehicles also provide these services. Furthermore they are complementary.

        

Goods and services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgments of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44).

The complementary relation between the goods/services can be, for example, functional.

2. 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 identical or similar are directed at the public at large. The goods and services at issue are specialised goods and services directed at average customers.

Taking into consideration the price of apparatus for locomotion by land, such as cars or motorcyles, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T-486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 39-42).

This same consideration must be assumed when considering vehicles in general. For the same reasons, consumers are likely to pay a higher than average degree of attention when purchasing, inter alia, electric bicycles or scooters, just as they are when purchasing an electric automobiles. The consumer will be an informed one.

3. The signs

The Urban	POWER URBAN
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking parts of the relevant public.

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 consisting of the words ‘The Urban’.

The contested sign is a word mark consisting of the words ‘POWER URBAN’.

The signs coincide in the word ‘URBAN’. The element ‘URBAN’ of both signs will be understood as ‘belonging to, or relating to, a town or city’ by the relevant public. At most it can be considered allusive in the sense that it could refer to “urban” means of locomotion (motorcycles easy to drive in the city). Therefore it is considered to have a normal degree of distinctiveness

The word ‘THE’ in the earlier mark, will denote what follows, since it is a common English word that will be understood as the definite article, which is devoid of distinctive character.

The element ‘POWER’ will be understood as (1) ‘ability or capacity to do something’, (2) ‘a specific ability, capacity, or faculty’, (3) ‘political, financial, social, etc, force or influence’, (4) ‘control or dominion or a position of control, dominion, or authority’, (5) ’a state or other political entity with political, industrial, or military strength’, (6) ‘a person who exercises control, influence, or authority’, (7) ‘a prerogative, privilege, or liberty’, (information extracted from Collins English Dictionary on 10/05/2017 at https://www.collinsdictionary.com )

The element of the marks ‘POWER’ will be associated with strength, force, energy. Bearing in mind that the relevant goods are powered by some kind of force, such as carburant or electricity, it is considered that this element is weak for these goods. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue.

Visually and aurally, the signs coincide in the word ‘URBAN’. They differ in the appearance and pronunciation of the additional word ‘THE’ in the earlier mark and the word ‘POWER’ in the contested sign.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, the signs are similar to an average degree due to the coincidence of the element ‘URBAN’ in the signs, as described above.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a/some non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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).

The goods and services are partly identical and partly similar. The earlier mark has a normal degree of distinctiveness and the degree of attention of the public is higher than average.

The signs are visually and aurally similar to the extent that they contain the word ‘URBAN’, which is an independent and distinctive part of the earlier mark.

As explained in section c) above, the differing elements in the signs, namely the word ‘THE’ in the earlier mark and the word ‘POWER’ in the contested sign, are not sufficient to counteract the commonalities between the marks, and are insufficient to exclude a likelihood of confusion for similar or identical goods and services, in particular taking into account that the word “POWER” has a certain descriptive character with respect to the goods in Class 12.

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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Based on the principle of imperfect recollection, it is considered that the similarities between the signs are sufficient to make at least the English-speaking part of the public believe that the similar or identical goods and services come from the same undertaking or economically linked undertakings. Considering all of the above, there is a likelihood of confusion on the part of the English-speaking parts of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 105 309. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Dorothee SCHLIEPHAKE

Patricia LOPEZ FERNANDEZ DE CORRES

Marianna KONDAS

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.