OPPOSITION No B 2 714 189

Petrol Industries B.V., Kalundborg 6, 5026 SE Tilburg, The Netherlands (opponent), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, The Netherlands (professional representative)

a g a i n s t

May Moon Media Inc., 5907 Blackwelder St., Culver City, California 90232, United States (of America) (applicant), represented by Martini Manna, Via Meravigli 16, 20123 Milano, Italy (professional representative).

On 19/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 714 189 is upheld for all the contested goods, namely:

Class 25:         Hats; capes; clothing; sports clothing; articles of sports clothing; socks; shirts; pants; tank tops; belts [clothing]; cardigans; ties; foulards [clothing articles]; sweatshirts; hooded sweatshirts; scarves; turtlenecks; leather jackets; sports jackets; jackets (Stuff -) [clothing]; boots for motorcycling; skirts; cycling gloves; clothing for cycling; jeans; T-shirts; jumpers; trousers; trousers shorts; balaclavas; printed t-shirts; coats; car coats; wind coats; leather coats; jumpsuits.

2.        European Union trade mark application No 15 226 764 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 226 764, namely against all the goods in Class 25. The opposition is based on, inter alia, international trade mark registration No 1 218 818 designating the European Union. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 218 818 designating the European Union.

1. The goods

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

Class 25: Clothing; footwear; headgear; jackets, pants, shirts, sweaters, socks, belts, caps, hats, ties, dresses, shoes, slippers, sandals.

The contested goods are the following:

Class 25: Hats; capes; clothing; sports clothing; articles of sports clothing; socks; shirts; pants; tank tops; belts [clothing]; cardigans; ties; foulards [clothing articles]; sweatshirts; hooded sweatshirts; scarves; turtlenecks; leather jackets; sports jackets; jackets (Stuff -) [clothing]; boots for motorcycling; skirts; cycling gloves; clothing for cycling; jeans; T-shirts; jumpers; trousers; trousers shorts; balaclavas; printed t-shirts; coats; car coats; wind coats; leather coats; jumpsuits.

As a preliminary remark, the Opposition Division notes that the applicant argues that it is a media and entertainment company that provides services in the classic car field and the services for which registration is sought have the purpose of selling merchandising goods via the applicant’s website. To support this argument, the applicant submitted some printouts from its website.

In that regard, it should be clarified that, although some of the wording used in the contested list of goods concerns sport, the comparison of the goods must be carried out on an objective basis, taking into account the goods on which the opposition is based, including broad categories of goods, where applicable.

Clothing; socks; shirts; pants; belts [clothing]; ties are identically contained in both lists of goods.

The contested trousers and the opponent’s pants are synonyms. Therefore, they are identical.

The contested capes; sports clothing; articles of sports clothing; tank tops; cardigans; foulards [clothing articles]; sweatshirts; hooded sweatshirts; scarves; turtlenecks; leather jackets; sports jackets; jackets (stuff -) [clothing]; skirts; clothing for cycling; jeans; t-shirts; jumpers; trousers shorts; printed t-shirts; cycling gloves; coats; car coats; wind coats; leather coats; jumpsuits are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested hats; balaclavas are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested boots for motorcycling are included in the broad category of the opponent’s footwear. Therefore, they are identical.

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 found to be identical are directed at the public at large.

The degree of attention is considered average.

3. The signs

	Petrolicious
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 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.

The word ‘PETROL’ is meaningful in certain territories, for example in countries where English or French is spoken. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Although the earlier mark is figurative, it is composed of the word ‘PETROL’ in an extremely banal black typeface, which, therefore, lacks any distinctive character.

The contested sign is a word mark, ‘PETROLICIOUS’.

As described above, the word ‘PETROL’ is meaningful in English. Therefore, the English-speaking part of the public will associate the contested sign with this word, which means ‘a liquid which is used as a fuel for motor vehicles’ (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/petrol on 12/06/2017).

In addition, although the contested sign as a whole has no meaning for the English-speaking part of the public and the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

As explained above, the word ‘PETROL’ has a concrete meaning in English. In addition, it is quite common to use the suffix ‘-ICIOUS’ to refer to the word ‘delicious’. Therefore, it is likely that the English-speaking part of the public will break down the contested sign into ‘PETROL-ICIOUS’. As a result, the English-speaking part of the public, or at least a part of it, will also perceive the word ‘delicious’ in the contested sign. However, the combination of ‘PETROL’ and ‘ICIOUS’, as in the contested sign, forms a coined term and, as explained above, ‘PETROL’ is meaningless for the goods in question. Therefore, the word ‘PETROLICIOUS’ is distinctive for the relevant goods.

Consequently, both signs will be perceived as referring to the concept of petrol, meaning any one of various volatile flammable liquid mixtures of hydrocarbons, which are obtained from petroleum and used as solvents and fuels for internal combustion engines. The word ‘PETROL’ is meaningless for the relevant goods; therefore, it is distinctive.

Since the consumer will associate both signs with petrol, the signs are conceptually similar, at least to an average degree.

Visually and aurally, the signs coincide in the string of letters/sounds ‘PETROL’. However, they differ in the ending ‘-ICIOUS’ in the contested sign, and in the number of letters, which is twice as many in the contested sign as in the earlier mark.

The similarities between the signs are at the beginning of the signs and the earlier mark is entirely reproduced in the contested sign.

Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads 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.

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

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). The interdependence principle is of particular importance in the present case, since the goods in question are identical.

Moreover, the similarity between the signs – which results from the fact that, from the perspective of the English-speaking part of the public, the contested sign contains the earlier mark in its entirety, which will be perceived. Finally, the difference resulting from the additional suffix ‘-ICIOUS’ of the contested sign cannot counteract the similarity between the signs resulting from the element/prefix that the signs have in common, namely ‘PETROL’. Therefore, the signs under comparison are likely to be confused.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘PETROL’. In support of its argument, the applicant submitted a list of several trade mark registrations and copies of web pages in which the word ‘PETROL’ is used in relation to clothing and footwear by 12 companies.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. Moreover, the copies of the web pages show use of name; however, this does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘PETROL’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above and taking into account the interdependence principle, there is a likelihood of confusion on the part of the English-speaking part 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 international trade mark registration No 1 218 818 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier right No 1 218 818 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Marine DARTEYRE

Julie GOUTARD

Loreto URRACA LUQUE

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.