OPPOSITION No B 2 599 614

Real Automovil Club de España, Isaac Newton, 4 Parque Tecnológico de Madrid (PTM), 28760 Tres Cantos (Madrid), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (applicant), represented by Schmidt Von Der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany  (professional representative).

On 17/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 599 614 is partially upheld, namely for the following contested goods:

Class 6: Bicycle locks of metal. 

Class 9: Bicycle computers; Bicycle radios; Helmets for bicycles; Cyclists' glasses; Bicycle speedometers.

Class 11: Bicycle lights; Bicycle lights; Headlamps for use on cycles; Direction indicators for cycles (Lamps for -); Bicycle reflectors for attachment to spokes. 

Class 12: Bicycles; Motorised bicycles; Bicycle tires [tyres]; Puncture repair outfits for bicycle tyres; Inner tubes for bicycles, cycles; Forks [bicycle parts]; Chains for bicycles, cycles; Bicycle gears; Multiple sprockets for bicycles; Bicycle gears; Chain wheel fittings for bicycles; Spokes for bicycles, cycles; Cycle hubs; Drive units for bicycles; Brakes for bicycles, cycles; Bicycle stands; Cycle saddles; Covers for bicycle saddles; Child carrying trailers; Bicycle trailers (riyakah); Pumps for bicycles, cycles; Baskets adapted for bicycles; Bicycle carriers; Luggage carriers for cycles; Bags for bicycles; Bicycle horns; Bells for bicycles, cycles; Bells for bicycles, cycles; Pedals for cycles; Bicycle carriers; Rims for wheels of bicycles, cycles; Handle bar ends [bicycle parts]; Drive chains [bicycle parts]; Gear wheels [bicycle parts]; Gear wheels [bicycle parts]; Fork crown covers [bicycle parts]; Front fork joints [bicycle parts]; Handlebars [bicycle parts]; Disk wheels [bicycle parts]; Drive trains [bicycle parts]; Change-speed gears [bicycle parts]; Dress guards for bicycles, cycles; Brake levers for cycles; Direction indicators for bicycles; Direction indicators for bicycles; Bicycle seat posts; Cranks for cycles; Bicycle gears; Frames for bicycles, cycles; Handle bars for bicycles, cycles; Water bottle cages for bicycles; Bicycle handlebar grips; Covers for handgrips of cycles; Brake grips of bicycles; Cycle mudguards; Chain guards for bicycles; Shock absorbers for bicycles; Toe straps for use on bicycles; Spindles of bicycles; Structural parts of bicycles; Covers for foot pedals on cycles; Toeclips for use on bicycles; Bicycle racks for vehicles; Bicycle racks for vehicles; Frames, for luggage carriers, for bicycles; Bicycle stands; Bells for bicycles, cycles; Bells for bicycles, cycles; Cycle mudguards; Chains [bicycle parts].

Class 25: Cyclists' clothing; Gloves for cyclists; Athletics shoes; Sports headgear [other than helmets].

2.        European Union trade mark application No 14 294 458 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 294 458. The opposition is based on Spanish trade mark registration No 3 551 123. 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

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

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compacts discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; correcting lenses; spectacles; sunglasses; clip-on sunglasses; contact lenses; lenses, glasses, frames, sidepieces, chains and cords for spectacles and sunglasses; covers and cases adapted for optical apparatus and products; covers and cases for spectacles, sunglasses and contact lenses; holders for spectacles and sunglasses; covers, carriers and bags adapted for computers, telephones, electronic agendas, radios and portable media players; accelerometers; acid hydrometers; batteries, electric, for vehicles; aerometers; agendas (electronic -); anti-theft warning apparatus; alcoholmeters; mouse pads; ammeters; calibrating rings; aerials; speed checking apparatus for vehicles; global positioning system [GPS] apparatus; navigation apparatus for vehicles [on-board computers]; vehicle radios; radio pagers; precision measuring apparatus; telephone apparatus; life saving apparatus and equipment; beacons, luminous; batteries, electric; compasses (directional -); starter cables for motors; junction boxes [electricity]; gauges; shoes for protection against accidents, irradiation and fire; signal bells; battery chargers; chargers for electric batteries; headphones; protective helmets; protective helmets for sports; life jackets; life belts; traffic cones; cell phone straps; milage recorders for vehicles; revolution counters; densimeters; reflecting discs for wear, for the prevention of traffic accidents; steering apparatus, automatic, for vehicles; balancing apparatus; gasometers [measuring instruments]; gloves for protection against accidents; gloves for divers; hardware; pressure in vehicle tires [tyres] (automatic indicators of low -); gasoline gauges; slope indicators; theft prevention installations, electric; hand free kits for phones; limiters [electricity]; signal lanterns; safety tarpaulins; flashing lights [luminous signals]; protective masks; USB flash drives; modems; signalling panels, luminous or mechanical; vehicle steering apparatus, automatic; pointers (light-emitting electronic -); radar apparatus; nets for protection against accidents; safety nets; life nets; voltage regulators for vehicles; knee-pads for workers; life buoys; whistle alarms; signalling whistles; simulators for the steering and control of vehicles; knee-pads for workers; life buoys; whistle alarms; signalling whistles; simulators for the steering and control vehicles; computer keyboards; teleprompters; thermostats for vehicles; electronic pocket translators; clothing for protection against accidents, irradiation and fire; anti-dazzle and anti-glare visors; downloadable electronic publications; electronic publications recorded on computer media; computer software applications, downloadable.  

Class 12: Vehicles; apparatus for locomotion by land, air or water; couplings for land vehicles; air bags [safety devices for automobiles]; anti-theft alarms for vehicles; spoilers for vehicles; saddlebags adapted for bicycles; shock absorbers for vehicles; head-rests for vehicle seats; transmission shafts for land vehicles; vehicle seats; safety seats for children, for vehicles; horns for vehicles; engine mounts for land vehicles; treads for retreading tires [tyres]; torsion bards for vehicles; undercarriages for vehicles; bicycles; connecting rods for land vehicles, other than parts of motors and engines; air pumps [vehicle accessories]; chains for automobiles, bicycles and cycles; gear boxes for land vehicles; casings for pneumatic tires [tyres]; bodies for vehicles; baskets adapted for cycles; vehicle chassis; mopeds; safety belts for vehicle seats; hydraulic circuits for vehicle; spikes for tires [tyres]; panniers adapted for cycles; balance weights for vehicle wheels; torque converters for land vehicles; windows for vehicles; frames for bicycles, cycles; vehicle brake disks; anti-glare devices for vehicles; anti-theft devices for vehicles; reduction gears for land vehicles; repair outfits for inner tubes; vehicle running boards; brake linings for vehicles brakes for bicycles, cycles; saddle covers for bicycles or motorcycles; seat covers for vehicles; vehicle covers [shaped]; covers for vehicle steering wheels; mudguards; direction signals for vehicles; pumps for bicycles, cycles; headlight wipers; windshield wipers; rims for wheels of bicycles, cycles; handle bars for bicycles, cycles; driving motors for land vehicles; motorcycles; motors, electric, for land vehicles; motors for land vehicles; shock absorbing springs for vehicles; vehicle suspension springs; pneumatic tires [tyres]; windshields; vehicle bumpers; sun-blinds adapted for automobiles; brake pads for automobiles; luggage carriers for vehicles; ski carriers for cars; doors for vehicles; spokes for bicycles, cycles; spokes (vehicle wheel -); luggage nets for vehicles; dress guards for bicycles, cycles; rearview mirrors; wheels for bicycles, cycles; mudflaps; saddles for bicycles, cycles or motorcycles; hub caps; upholstery for vehicles; caps for vehicle petrol [gas] tanks; bells for bicycles, cycles; tubeless tires [tyres] for bicycles, cycles; valves for vehicle tires [tyres]; valves for vehicle tires [tyres]; snowmobiles; brake shoes for vehicles.

Class 25: Clothing; footwear, headgear; aprons [clothing]; masquerade costumes; overalls; belts (money -) [clothing]; kerchiefs [clothing]; pocket squares; shoulder scarves; garments for protecting clothing; motorists’ and motorcyclists’ clothing; uniforms; wedding gowns. 

Class 28: Games and plaything; gymnastics and sporting articles not included in other classes; decorations for Christmas trees; golf bags, with or without wheels; edges of skis; golf bag carts; wax for skis; skis; waterskis; ski bindings; water wings; bags especially designer for skins and surfboards; gloves for games; models being toys; masts for sailboards; scale model vehicles; cards (playing -); golf clubs; paragliders; skating boots with skated attached; skateboards; piñatas; scrapers for skis; nets for sports; radio-controlled toy vehicles; toy vehicles.

The contested goods are the following:

Class 6: Bicycle locks of metal. 

Class 8: Bicycle tools (hand-operated); Multipurpose tool bags for bicycles; Miniature tools for bicycles; Chain breakers for bicycles; Wrenches for bicycles; Torque wrenches for bicycles; Tube cutters for bicycles; Inserts for wrenches for bicycles; Cable cutters for bicycles; Pliers for bicycles; Screwdrivers for bicycles; Hand-operated locking tools, namely locking wrenches for bicycles.

Class 9: Bicycle computers; Bicycle radios; Helmets for bicycles; Cyclists' glasses; Bicycle speedometers.

Class 11: Bicycle lights; Bicycle lights; Headlamps for use on cycles; Direction indicators for cycles (Lamps for -); Bicycle reflectors for attachment to spokes. 

Class 12: Bicycles; Motorised bicycles; Bicycle tires [tyres]; Puncture repair outfits for bicycle tyres; Inner tubes for bicycles, cycles; Forks [bicycle parts]; Chains for bicycles, cycles; Bicycle gears; Multiple sprockets for bicycles; Bicycle gears; Chain wheel fittings for bicycles; Spokes for bicycles, cycles; Cycle hubs; Drive units for bicycles; Brakes for bicycles, cycles; Bicycle stands; Cycle saddles; Covers for bicycle saddles; Child carrying trailers; Bicycle trailers (riyakah); Pumps for bicycles, cycles; Baskets adapted for bicycles; Bicycle carriers; Luggage carriers for cycles; Bags for bicycles; Bicycle horns; Bells for bicycles, cycles; Bells for bicycles, cycles; Pedals for cycles; Bicycle carriers; Rims for wheels of bicycles, cycles; Handle bar ends [bicycle parts]; Drive chains [bicycle parts]; Gear wheels [bicycle parts]; Gear wheels [bicycle parts]; Fork crown covers [bicycle parts]; Front fork joints [bicycle parts]; Handlebars [bicycle parts]; Disk wheels [bicycle parts]; Drive trains [bicycle parts]; Change-speed gears [bicycle parts]; Dress guards for bicycles, cycles; Brake levers for cycles; Direction indicators for bicycles; Direction indicators for bicycles; Bicycle seat posts; Cranks for cycles; Bicycle gears; Frames for bicycles, cycles; Handle bars for bicycles, cycles; Water bottle cages for bicycles; Bicycle handlebar grips; Covers for handgrips of cycles; Brake grips of bicycles; Cycle mudguards; Chain guards for bicycles; Shock absorbers for bicycles; Toe straps for use on bicycles; Spindles of bicycles; Structural parts of bicycles; Covers for foot pedals on cycles; Toeclips for use on bicycles; Bicycle racks for vehicles; Bicycle racks for vehicles; Frames, for luggage carriers, for bicycles; Bicycle stands; Bells for bicycles, cycles; Bells for bicycles, cycles; Cycle mudguards; Chains [bicycle parts].

Class 25: Cyclists' clothing; Gloves for cyclists; Athletics shoes; Sports headgear [other than helmets].

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 6

The contested bicycle locks of metal are similar to bicycles because of their strong complementary link. As an essential part of bicycles, they are indispensable for the use of the applicant’s goods, target the same end users and are sold via the same distribution channels.

Contested goods in Class 8

The contested bicycle tools (hand-operated); multipurpose tool bags for bicycles; miniature tools for bicycles; chain breakers for bicycles; wrenches for bicycles; torque wrenches for bicycles; tube cutters for bicycles; inserts for wrenches for bicycles; cable cutters for bicycles; pliers for bicycles; screwdrivers for bicycles; hand-operated locking tools, namely locking wrenches for bicycles have no relevant connections with the opponent’s goods and services in Classes 9, 12, 25 and 28. They are different in their nature and intended purpose as can be gleaned from the wording. They are neither complementary nor in competition. Furthermore, their usual origin is different. Although the contested goods are intended to be used for the construction, repair or maintenance of bicycles, they are not indispensable for the use of the opponent’s bicycles in such a way that the relevant consumer may think that they come from the same undertaking. Moreover, the consumers are very well aware that these goods pertain to different market sectors, the contested hand tools being produced by tool manufacturers and the opponent’s bicycles by bicycle manufacturers. Therefore, they are dissimilar.

Contested goods in Class 9

The contested bicycle computers are included in the broad category of the opponent’s computers. Therefore, they are identical.

The contested bicycle radios are included in the broad category of the opponent’s radios. Therefore, they are identical.

The contested helmets for bicycles are included in the broad category of the opponent’s protective helmets for sports. Therefore, they are identical.

The contested cyclists' glasses are included in the broad category of the opponent’s optical apparatus and instruments. Therefore, they are identical.

The contested bicycle speedometers are included in the broad category of the opponent’s measuring apparatus and instruments. Therefore, they are identical.

Contested goods in Class 11

The contested bicycle lights; bicycle lights; headlamps for use on cycles; direction indicators for cycles (lamps for -); bicycle reflectors for attachment to spokes are similar to bicycles because of their strong complementary link. As an essential part of bicycles, they are indispensable for the use of the applicant’s goods, target the same end users and are sold in the same bicycle shops.

Contested goods in Class 12

Bicycles are identically contained in both lists of goods.

The contested motorised bicycles are included in the broad category of the opponent’s bicycles. Therefore, they are identical.

The contested bicycle tires [tyres]; puncture repair outfits for bicycle tyres; inner tubes for bicycles, cycles; forks [bicycle parts]; chains for bicycles, cycles; bicycle gears; multiple sprockets for bicycles; bicycle gears; chain wheel fittings for bicycles; spokes for bicycles, cycles; cycle hubs; drive units for bicycles; brakes for bicycles, cycles; bicycle stands; cycle saddles; covers for bicycle saddles; child carrying trailers; bicycle trailers (riyakah); pumps for bicycles, cycles; bicycle carriers; luggage carriers for cycles; bags for bicycles; bicycle horns; bells for bicycles, cycles; bells for bicycles, cycles; pedals for cycles; bicycle carriers; rims for wheels of bicycles, cycles; handle bar ends [bicycle parts]; water bottle cages for bicycles; drive chains [bicycle parts]; gear wheels [bicycle parts]; gear wheels [bicycle parts]; fork crown covers [bicycle parts]; front fork joints [bicycle parts]; handlebars [bicycle parts]; disk wheels [bicycle parts]; drive trains [bicycle parts]; change-speed gears [bicycle parts]; dress guards for bicycles, cycles; brake levers for cycles; direction indicators for bicycles; direction indicators for bicycles; bicycle seat posts; cranks for cycles; bicycle gears; frames for bicycles, cycles; handle bars for bicycles, cycles;; bicycle handlebar grips; covers for handgrips of cycles; brake grips of bicycles; cycle mudguards; chain guards for bicycles; shock absorbers for bicycles; toe straps for use on bicycles; spindles of bicycles; structural parts of bicycles; covers for foot pedals on cycles; toeclips for use on bicycles; bicycle racks for vehicles; bicycle racks for vehicles; frames, for luggage carriers, for bicycles; bicycle stands; bells for bicycles, cycles; bells for bicycles, cycles; cycle mudguards; chains [bicycle parts] are similar to the opponent’s bicycles. Indeed, the applicant’s bicycle parts and accessories are essential for the normal use of bicycles. Therefore, the public may expect these goods to be produced by, or at least produced under the control of the manufacturer of the assembled bicycles. For example, even if these parts and accessories are manufactured by a subcontractor, as is common in at least part of the industry, they are often branded with the mark of the bicycle manufacturer which, in the eye of the end user, is a factor that suggests that the goods are complementary. Furthermore, these goods target the same public, are sold via the same distribution channels and to some extent are produced by the same undertakings.

The contested baskets adapted for bicycles are included in the broad category of the opponent’s luggage carriers for vehicles, a bicycle being a vehicle. Therefore, they are identical.

Contested goods in Class 25

The contested cyclists' clothing; gloves for cyclists are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested athletics shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested sports headgear [other than helmets] is included in the broad category of the opponent’s headgear. 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 or similar are directed at the public at large. The degree of attention may vary from average to above average, considering that some of the goods in question, namely in the Classes 9 and 12, are not everyday purchases and usually involve considerable consideration before purchase due to their connection with safety.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

In this regard it should be noted that the earlier mark is a figurative mark consisting of the word ‘RACE’ in italicised letters with a small crown on top. Given the sheer size of the word ‘RACE’ vis-à-vis the image of the crown, this word clearly stands out as the dominant element of the earlier mark. The word ‘RACE’ is also the more distinctive element of the mark, since it does not belong to the category of basic English words that a significant part of the relevant public in Spain would be familiar with, whereas the crown is a commonly used laudatory symbol of power, legitimacy, victory, triumph, honour and/or glory and is therefore, lowly distinctive.

The contested sign is a figurative mark consisting of the word ‘RACE’ and ‘MASTER’ which are visually separated by means of their different colour, ‘RACE’ being depicted in white letters and ‘MASTER’ in grey. Both words are placed against a black rectangular background with a grey swoosh above the word ‘RACE’. Due to the big contrast between the white colour of the word ‘RACE’ and the black background, this word is the more eye-catching element of this sign considering that the word ‘MASTER’ is depicted in a colour which is far more difficult to distinguish from the black background. However, in terms of distinctiveness these verbal elements are on equal footing, both being meaningless in relation to the goods in question. The mark’s other elements, that is, the swoosh and the black rectangular background are less distinctive, since they are commonly used decorative elements in trade.

Visually, the signs coincide in the distinctive verbal element ‘RACE’ which is the sole verbal element of the earlier mark and the first verbal element of the contested sign. They differ in their figurative elements and the word ‘MASTER’ of the contested sign. However, considering that the word ‘RACE’ is the more eye-catching element of both signs, as well as the more distinctive element of the earlier mark and the first and therefore more noticeable element of the contested sign, these secondary and/or less distinctive elements cannot counterbalance the visual similarity in the common verbal element ‘RACE’. Hence, the signs must be considered visually similar to a high degree.

Aurally, the signs coincide in the pronunciation of the two-syllable-word ‘RA-CE’. What differentiates them is the two-syllable-word ‘MAS-TER’ of the contested sign, since the signs’ figurative elements will not be pronounced. Therefore, due to the common beginning and complete repetition of the earlier mark in the contested sign the marks must be found aurally to an average degree.

Conceptually, neither of the marks as a whole evoke a clear concept, since one of their elements, namely the common element ‘RACE’, has no meaning in Spanish. The word ‘MASTER’ of the contested sign may be meaningful insofar as it is perceived as indicating a ‘person who holds a second or further degree from a university or other academic institution’. The marks’ figurative elements evoke no clear concept or are of little impact conceptually, since they will be perceived as purely laudatory or decorative elements of limited distinctiveness. Therefore, the marks are not similar mainly to the extent that the word ‘MASTER’ evokes a concept.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

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 (eighth recital 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 or services may be offset by a lower degree of similarity between the marks, and vice versa (see to that effect, 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 earlier mark is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested goods were found identical, similar or dissimilar to those of the earlier mark and are directed at a public whose level of attention may vary from average to above average. The marks in dispute have been found to be visually highly similar and aurally similar to an average degree, while part of the signs convey a meaning not shared by the other mark.

However these conceptual differences do not neutralize the visual and phonetic similarities between the signs, since neither sign as a whole conveys such a clear and specific meaning as to counteract the visual and aural similarities noted above (13/09/2007, C-234/06, ‘Bainbridge’, § 34; 14/10/2003, T-292/01, ‘Bass’, § 54; 22/06/2004, T-185/02, ‘Picaro’, § 56 and 27/10/2005, T-336/03, ‘Mobilix’, § 80-81).

The crown in the earlier mark does not have much of an impact on the overall perception of this sign, considering that it will be perceived as a laudatory symbol alluding to the quality of the goods, while the combination of the word ‘MASTER’ with the meaningless ‘RACE’ cannot be considered to result in a clear and specific meaning as required by the case law. Therefore, the public will rather notice that the dominant and distinctive element of the earlier mark is included in the contested sign as an independent distinctive element.

In the light of the foregoing, the degree of similarity between the marks at issue is sufficient for it to be considered that it is likely that even a more attentive Spanish consumer could believe that the goods in question come from the same undertaking or, as the case may be, economically linked undertakings when confronted with the contested sign in relation to identical services.

Indeed, considering that the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically-related ones (C-39/97, ‘Canon’, EU:C:1998:442, § 30), the relevant Spanish consumer may, for instance, think that the word ‘MASTER’ in the contested sign indicates a sub brand of the brand ‘RACE’.

Therefore, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration No 3 551 123. It follows from the above that the contested trade mark must be rejected for the goods found to be identical orsimilar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Christian RUUD

Adriana VAN ROODEN

Benoit VLEMINCQ

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.