OPPOSITION No B 2 753 534

Panaventura S.L., Bravo Murillo 297, Portal 10, 1º dcha, 28020 Madrid, Spain (opponent), represented by Gonzalez Vacas, S.L., Sagasta, 4, 28004 Madrid, Spain (professional representative)

a g a i n s t

calimoto GmbH, Kurfürstenstraße 141, 10785 Berlin, Germany (applicant), represented by Schenk Lechleitner Krösch Rechstanwälte Steuerberater, Königsbrücker Straße 76, 01099 Dresden, Germany (professional representative).

On 25/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 753 534 is partially upheld, namely for the following contested goods:

Class 25:        Clothing, in particular clothing of leather and textile for motorcyclists, jackets, trousers, combinations being matching jackets and trousers, that can be linked to motorcycling and single-piece leather suits for adults and children, underwear, t-shirts, sweatshirts, denim clothing of all kinds; gloves [clothing]; protective kidney belts, leather caps, caps [headwear], baseball caps, boots, shoes and sports shoes, headgear, balaclavas; swimwear, clothing of imitations of leather; insoles; mittens; waist belts; stocking suspenders; combinations [clothing]; rainwear; neck scarfs [mufflers]; sashes (for wear); stockings; clothing of textile, all the aforesaid goods included in class 25; thermal motorcycle jackets, thermal motorcycle trousers, thermal motorcycle combinations, including one-piece clothing; articles of clothing for sports and leisure wear.

2.        European Union trade mark application No 15 400 451 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 some of the goods and services of European Union trade mark application No 15 400 451 for the word mark ‘calimoto’, namely against all the goods in Class 25 and some of the services in Class 35. The opposition is based on Spanish trade mark registration No 3 538 507 for the word mark ‘CALIMOCHO.COM’. 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 on which the opposition is based are the following:

Class 25:        Articles made of dressing, underwear and worn except orthopaedic, hats, caps, handkerchiefs of neck, vests, shirts, trousers, jerseys, suits, dresses, ties, cloths, gloves (cloths).

The contested goods and services are the following:

Class 25:        Clothing, in particular clothing of leather and textile for motorcyclists, jackets, trousers, combinations being matching jackets and trousers, that can be linked to motorcycling and single-piece leather suits for adults and children, underwear, t-shirts, sweatshirts, denim clothing of all kinds; gloves [clothing]; protective kidney belts, leather caps, caps [headwear], baseball caps, boots, shoes and sports shoes, headgear, balaclavas; swimwear, clothing of imitations of leather; insoles; mittens; waist belts; stocking suspenders; combinations [clothing]; rainwear; neck scarfs [mufflers]; sashes (for wear); stockings; clothing of textile, all the aforesaid goods included in class 25; thermal motorcycle jackets, thermal motorcycle trousers, thermal motorcycle combinations, including one-piece clothing; articles of clothing for sports and leisure wear.

Class 35:        Presentation of goods on communication media, for retail purposes; sales promotion for others.

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

As a preliminary remark, it is to be noted that where a clearly incorrect translation is detected in the list of goods and services covered by the earlier national or international mark which prevents the Office from carrying out a comparison of goods and services, the opponent may be required under Rule 98(1) EUTMIR, second sentence, to submit a certificate from a sworn or official translator that the translation corresponds to the original, or, in clear cut cases, for the purposes of the decision, the Office may replace a clearly incorrect translation of a certain term by a correct translation adding an explanation to that effect.

As the case at hand is a clear cut case, the opponent’s ‘articles made of dressing’ will be interpreted as ‘clothing’ and the ‘worn except orthopaedic’ will be interpreted as ‘footwear except orthopaedic’.

The terms ‘in particular’ and ‘including’, used in the applicant’s list of goods, indicates that the specific goods 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).

As a preliminary remark, it has also 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 25

The contested clothing, in particular clothing of leather and textile for motorcyclists, jackets, trousers, combinations being matching jackets and trousers, that can be linked to motorcycling and single-piece leather suits for adults and children, underwear, t-shirts, sweatshirts, denim clothing of all kinds; gloves [clothing]; protective kidney belts; balaclavas; swimwear, clothing of imitations of leather; mittens; waist belts; stocking suspenders; combinations [clothing]; rainwear;  neck scarfs [mufflers]; sashes (for wear); stockings; clothing of textile, all the aforesaid goods included in class 25; thermal motorcycle jackets, thermal motorcycle trousers, thermal motorcycle combinations, including one-piece clothing; articles of clothing for sports and leisure are identical to the opponent’s articles made of dressing i.e. ‘clothing’, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods. 

The contested caps [headwear] included in Class 25 are identically contained in the opponent’s list of goods.

The contested headgear included in Class 25 includes, as a broader category the opponent’s caps. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested leather caps and baseball caps included in Class 25 are included in the broad category of the opponent’s caps. Therefore, they are identical. 

The contested boots, shoes and sports shoes included in Class 25 overlap with the opponent’s worn except orthopaedic i.e. ‘footwear except orthopaedic’. Therefore, they are identical.

The contested insoles included in Class 25 are similar to the opponent’s worn except orthopaedic i.e. ‘footwear except orthopaedic’. They can coincide in producer, end user and distribution channels. Furthermore, they are complementary to each other.

Contested services in Class 35

The contested services in Class 35 are dissimilar to all the opponent’s goods. Although they relate to sales promotions which may promote goods offered by the opponent, they are offered by different companies, they have a different nature and purpose and they are neither complementary to nor in competition with each other. Consumers would not think that these goods and services come from the same or economically linked undertakings.

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 is considered to be average.

3. The signs

CALIMOCHO.COM	calimoto
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).

The earlier sign is a word mark, ‘CALIMOCHO.COM’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

The verbal element ‘CALIMOCHO’ will be understood by the relevant public as referring to a drink (information extracted from diccionario de la lengua española on 25/09/2017 at http://dle.rae.es/?id=6ofVIjk), thus it has no meaning in connection to the goods on which the opposition is based and is distinctive. However, the verbal element ‘.COM’ of the earlier sign will be perceived as a generic top-domain used in the internet’s domain name system. Top level domain endings, such as ‘.com’, only indicate the place where information can be found on the internet and thus cannot indicate a commercial origin.

The contested sign is a word mark, ‘calimoto’. The public in the relevant territory will perceive the contested sign as formed of two linked but independent words, namely ‘CALI’ and ‘MOTO’. It must be noted that the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word 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). The reason for mentally dissecting the mark is that the word ‘MOTO’ is commonly used in Spanish as the abbreviation of ‘motocicleta’, meaning ‘motorbike’ in English, whereas ‘CALI’ has no meaning in the relevant territory. Given that the verbal element ‘MOTO’ has a certain meaning in the relevant territory, it is non-distinctive for some of the goods in Class 25, namely those goods that relate to motorcycling. For the rest of the goods in Class 25 the verbal element ‘MOTO’ has normal distinctiveness.

Visually, the signs coincide in the sequence of the letters ‘C-A-L-I-M-O-O’ and they differ just in the letters ‘CH’ and ‘T’, contained respectively in the earlier and the contested sign, as well as the non-distinctive verbal element ‘.COM’, contained in the earlier sign. To this extent the signs at issue are visually highly similar.

Aurally, the pronunciation of the signs coincides in the syllables ‛CA-LI-MO’, present identically in the beginning of both signs. The pronunciation differs in the syllables ‛CHO-COM’ of the earlier sign, which have no counterparts in the contested mark. However, as mentioned above, the verbal element ‘COM’ is non-distinctive. Contrary to the applicant’s assertions, the pronunciation of the vowel ‘o’ in the earlier sign is not shorter than in the contested sign. Moreover, the pronunciation of the vowel ‘o’ in both signs will be the same. Therefore, the signs at issue are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. To the extent that the earlier sign conveys the meaning of a drink and the verbal element of the contested sign conveys the meaning of ‘motorbike’, the signs are not conceptually 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, although the earlier sign will be understood by the relevant public, it 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 non-distinctive element as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

In the present case, the conflicting goods and services are partly identical, partly similar and partly dissimilar. The signs are visually and aurally highly similar and conceptually dissimilar. As already found by the Opposition Division in section c) of this decision, the verbal element ‘.COM’ in the earlier sign will be understood by the relevant public as a top level domain for a website and has, therefore, barely an impact on the overall impression. The same applies to the verbal element ‘MOTO’ of the contested sign which is non-distinctive in respect to the goods in Class 25 that refer to motorcycling. However, the signs at issue share an identical beginning and it should be noted in this regard that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. Consequently, the identical beginnings of the signs at issue have a decisive role when assessing the likelihood of confusion between them.

In addition to the above, generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual similarities between the signs at issue are particularly relevant when assessing the likelihood of confusion between them.

Furthermore, as the signs at issue are visually and aurally highly similar and as mentioned above, the visual aspect has a stronger impact in this particular case in assessing the likelihood of confusion, these similarities are capable of counteracting the conceptual discrepancies between the signs.  

Taking also in account that the 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), the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 3 538 507.  

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

The opposition is not successful insofar as the services are concerned which were found 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.

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

Lars HELBERT

Alexandra APOSTOLAKIS

Martin EBERL

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.