OPPOSITION No B 2 719 493

Kellys Bicycles s.r.o., Slnečná cesta 374, 922 01 Veľké Orvište, Slovakia (opponent), represented by Beleščák & Partners, s.r.o., Kukučinova 13, 921 01 Piešt'any, Slovakia (professional representative).

a g a i n s t

Terence Dolan, 8 Old Boundary Way Ormskirk, Ormskirk Lancashire L392YW, United Kingdom (applicant).

On 30/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 719 493 is upheld for all the contested goods.

2.        European Union trade mark application No 15 202 542 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 of European Union trade mark application No 15 202 542. The opposition is based on, inter alia, Slovak trade mark registration No 181 924. 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 Slovak trade mark registration No 181 924.

1. The goods

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

Class 12:        Cycle frames; luggage carriers for vehicles; bicycles; direction indicators for bicycles; mudguards; cycle chains; handlebars for cycles; steering wheels for bicycles; tires for bicycles; inner tubes for bicycles; bicycle hoops; bicycle gears; bicycle brakes; bicycle rims; cycle cranks; cycle hubs; cycle pedals; bicycle pumps; bicycle spokes; cycle wheels; bicycle saddles; cycle stands; cycle bells; dress guards for bicycles; saddle covers for bicycles or motorcycles; tubeless tires for cycles.

After a request from the applicant to limit the list of goods and services which was accepted by the Office, the contested goods are the following:

Class 12:        Bicycle handlebars.

Contested goods in Class 12

Bicycle handlebars are identically contained in both lists of goods (including synonyms).

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 to be average.

3. The signs

ALPINA
Earlier trade mark	Contested sign

The relevant territory is Slovakia.

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, ‘ALPINA’.

The contested sign is a figurative mark with the verbal element ‘ALPINA’. The verbal element is written in white capital letters with a light grey outline. The letters are also slightly tilted. The top of the letter ‘A’ stretches over the rest of the letters in a red colour.

Both marks have no meaning in the relevant territory and are therefore distinctive.

Visually, the signs coincide in their verbal elements ‘ALPINA’. The signs differ in the figurative element of the contested sign however the figurative element is an ordinary stylisation of the verbal element and thus will have less impact on the consumer.

Therefore, the signs are visually highly similar.

Aurally, the signs are identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital of art. 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested goods are identical. The goods are directed at the public at large with an average level of attention. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. Additionally the marks in dispute have been found visually highly similar and aurally identical. Since the mark has no meaning a conceptual comparison is not possible.

Considering the high similarities between the signs and the identity between the goods there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Slovak trade mark registration No 181 924. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, Slovak trade mark registration No 181 924, 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 rights 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

Boyana NAYDENOVA

Benjamin Erik WINSNER

Pedro JURADO

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.