OPPOSITION No B 2 791 872

Marques de l'Etat de Monaco – Monaco Brands, L'Estoril 31 avenue Princesse Grace, 98000 Monaco, Monaco (opponent), represented by Nony, 11, rue Saint Georges, 75009 Paris, France (professional representative).

A g a i n s t

Benjamin Grund, Erzgießereistr. 5ª, 80335 München, Germany (applicant), represented by Bronhofer Lukač Langlotz & Partner Rechtsanwälte, Sendlinger-Tor-Platz 5, 80336 München, Germany (professional representative).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 791 872 is partially upheld, namely for the following contested goods:

Class 9:        Helmets for motorcyclists.

2.        European Union trade mark application No 15 588 338 is rejected for all the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 588 338, . The opposition is based on international trade mark registration No 1 069 254 designating, inter alia, France. The opponent invoked Article 8(1)(b) EUTMR.

The opposition is based on more than one designation of earlier international trade mark registration No 1 069 254. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 069 254 designating France.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based. 

In the present case, the date of filing of the contested trade mark is 28/06/2016.

Earlier trade mark No 1 069 254 is an international registration designating, inter alia, the individual Member State of France. Each Member State has either a 12 or 18 month deadline to issue a provisional refusal under the Madrid Protocol. If no provisional refusal is issued within this deadline, the date that will be decisive in determining whether the mark is subject to proof of use obligation is calculated taking the date of notification from which the time limit to notify the refusal starts (as notified by WIPO), applying the relevant 12 or 18 month deadline.

For the designation of France the 12 month deadline applies, which added to WIPO’s date of notification namely 07/06/2012, establishes that the decisive date is 07/06/2013. Therefore, the request for proof of use is inadmissible for France.

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 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, 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 disks; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; extinguishers.

Class 12:        Vehicles; apparatus for locomotion by land, air or water.

Class 25:        Clothing, footwear, headgear.

Class 35:        Advertising; business management; business administration; office functions.

The contested goods and services are the following:

Class 9:        Helmets for motorcyclists.

Class 35:        Retailing relating to motorcycle helmets; wholesaling relating to motorcycle helmets; online trading relating to motorcycle helmets.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 9

The contested helmets for motorcyclists in Class 9 are protective headgear and are goods of the same nature as the opponent’s headgear in Class 25. Moreover, these goods have same methods of use and target same relevant publics. Therefore, they are deemed similar to a low degree.

Contested services in Class 35

Retail services of motorcycle helmets in Class 35 and headgear in Class 25 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since motorcycle helmets and headgear are only similar to a low degree. The same principles apply to services rendered in connection with other types of activities revolving around the actual sale of goods, such as wholesale services and online and internet shopping in Class 35.

Consequently, the contested retailing relating to motorcycle helmets; wholesaling relating to motorcycle helmets; online trading relating to motorcycle helmets are dissimilar to the opponent’s headgear in Class 25.

Bearing this in mind, the remaining goods of the opponent’s mark, namely scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, 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 disks; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; extinguishers in Class 9, vehicles; apparatus for locomotion by land, air or water in Class 12 and clothing, footwear in Class 25, are clearly not identical to motorcycle helmets and, therefore, also dissimilar to the contested retailing relating to motorcycle helmets; wholesaling relating to motorcycle helmets; online trading relating to motorcycle helmets in Class 35.

Furthermore, the contested retailing relating to motorcycle helmets; wholesaling relating to motorcycle helmets; online trading relating to motorcycle helmets in Class 35, which are various services around the sales of motorcycle helmets, are dissimilar to the opponent’s services in Class 35; advertising, which consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity; business management, which are services intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning; business administration, which are services intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors and office functions, which are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. The contested services differ in nature, purpose, method of use to these services of the opponent and these services are neither complementary or in competition.

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 similar to low degree are directed at the public at large.

The degree of attention is considered average.

3. The signs

MONACO
Earlier trade mark	Contested sign

The relevant territory is France.

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).

Both signs contain the verbal element ‘MONACO’, which will be perceived as the principality Monaco ‘forming an enclave within French territory (…)’ (information extracted on 22/08/2017 from Oxford Dictionaries online https://en.oxforddictionaries.com/definition/monaco). Contrary to the applicant’s view, ‘MONACO’ is of normal distinctiveness for headgear and for helmets for motorcyclists, since as to the best knowledge of the Office; there is no obvious connection or link between such goods and the principality of Monaco.

The additional verbal element of the contested sign (placed below ‘monaco’) ‘HELMETS’ will be perceived as meaningless by the French consumers and is distinctive. Moreover, the letter ‘m’, placed above ‘monaco’, is likely to be perceived as the first letter of the latter element in the contested sign.  In addition, the word ‘monaco’ and the letter ‘m’ are rendered in a handwritten font in red and white in the contested sign. In general, consumers tend to focus on the word elements of signs when signs consist of both verbal and figurative components. In principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Finally, the contested sign contains no elements which are clearly more dominant than other elements.

Visually, the signs coincide in the distinctive element of ‘MONACO’. They differ in the verbal element ‘HELMETS’, the letter ‘m’ and the graphical representation of the contested sign. It is true that ‘HELMETS’ is distinctive and appears as an individual element in the contested sign. However, ‘HELMETS’ is depicted in a smaller font than ‘monaco’, and since it is placed below the latter element, it has a secondary position in the contested sign. Moreover, the letter ‘m’ (which is likely to be perceived as the first letter of ‘monaco’) and the figurative elements of the contested sign (for the reasons explained above) have less impact on the comparison of the signs. Therefore, the signs are visually similar to an average degree.

Aurally, ‘MONACO’ will be pronounced identically in both signs. The differing verbal element of the contested sign ‘HELMETS’ may (at least by some consumers) not be pronounced in the sign, due to its smaller size, whereas the letter ‘m’ may not be pronounced in the contested sign (for the reasons explained above). Therefore, the Opposition Division finds the signs to be aurally similar to an average degree overall.  

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks; both signs include the distinctive concept of the principality of Monaco whereas they differ in the additional letter ‘m’ in the contested sign. Nevertheless, the ‘m’ is likely to be perceived as the first letter of ‘monaco’. The additional verbal element of the contested sign ‘HELMETS’ will not convey any concept for the French consumers, while the sign’s figurative elements will neither be perceived as conveying any particular meaning. Bearing this in mind, these verbal and figurative elements do not influence on the comparison of the signs. Therefore, the signs are conceptually highly similar.

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 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods and services are partly similar to a low degree and partly dissimilar. The signs are visually and aurally similar to an average degree and conceptually highly similar. Bearing this in mind, and also taking into account the principle of interdependence (as explained above), the similarity is such that it leads to a likelihood of confusion although the goods at issue are similar to a low degree. Moreover, the earlier mark is distinctive and the relevant public’s degree of attention is average. Account is also 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).

Considering all the above, there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s international registration No 1 069 254 designating France.  

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to a low degree to those of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

Since the other designation of the international registration, that is, the designation of the European Union, covers no broader scope of goods and services compared to the designation of France, there is no need to examine the opposition in relation to the designation of the European Union, since the outcome cannot be different with respect to the services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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 will decide a different apportionment of costs.

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

The Opposition Division

Boyana NAYDENOVA

Christian RUUD

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.