OPPOSITION No B 2 752 544

Derby Cycle Werke GmbH, Siemensstr. 1-3, 49661 Cloppenburg, Germany (opponent), represented by Jabbusch Siekmann & Wasiljeff, Hauptstr. 85, 26131 Oldenburg, Germany (professional representative)

a g a i n s t

AtranVelo AB, Mellangårdsvägen 12, 31150 Falkenberg, Sweden (applicant).

On 11/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 752 544 is upheld for all the contested goods.

2.        European Union trade mark application No 15 666 886 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 15 666 886 for the word mark ‘Connect System’. The opposition is based on European Union trade mark registration No 9 073 321 for the word mark ‘Connect’. 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 12:        Bicycles and parts thereof.

The contested goods are the following:

Class 12:        Luggage carriers for cycles; Frames, for luggage carriers, for bicycles; Delivery tricycles; Luggage carriers for motorcycles; Two-wheeled motor vehicles; Frames for two-wheeled motor vehicles.

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 12

Some of the opponent’s bicycles are nowadays also equipped with motor – ‘e-bikes’, and, therefore, the contested two-wheeled motor vehicles overlap with the opponent’s bicycles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

For the same reason, the contested frames for two-wheeled motor vehicles overlap with the opponent’s parts of bicycles. Therefore, they are identical.

The contested frames, for luggage carriers, for bicycles as accessories for bicycles have some relevant points in common with the opponent’s parts of bicycles. They share the same distribution channels, producers and they target the same public. Therefore, they are similar. 

The contested delivery tricycles are considered to be highly similar to the opponent’s bicycles as they have a similar nature and method of use, are likely to be manufactured by the same companies, and target the same customers via similar distribution channels.

The remaining contested luggage carriers for cycles; luggage carriers for motorcycles are similar to the opponent’s parts of bicycles as they may coincide in their end users, be marketed through the same channels and be produced by the same undertaking.

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 and at the professionals with specific knowledge and expertise. The degree of attentiveness may vary from average to above average considering that the goods in question are not everyday purchases and usually involve some reflexion before purchase due to their connection with safety.  

3. The signs

Connect	Connect System
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. Since the signs in question are composed of the terms which are meaningful in certain territories, for example in those countries where English is understood, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Both marks are word marks. The earlier mark is composed of the word ‘Connect’ and the contested sign is composed of two words ‘Connect System’.

The common word ‘Connect’ will be understood by the relevant public as referring to a verb describing the situation in which ‘something or someone connects one thing to another, or if one thing connects to another, the two things are joined together’. Bearing in mind the relevant goods, namely various vehicles and parts thereof, it is considered that this term is weak in relation to these goods.

The second word of the contested sign ‘System’ will be associated by the relevant public in the relevant territory with, inter alia, ‘a network of things that are linked together so that people or things can travel from one place to another’. Taking into account the goods in question it is considered that this term is weak in relation to them (both definitions consulted on 28/08/2017, Collins English Dictionary online version at https://www.collinsdictionary.com/dictionary/english/connect and at https://www.collinsdictionary.com/dictionary/english/system). The term ‘System’ refers to the verb ‘Connect’ that describes its nature, namely as a system in which various elements are joined (connected) together.

The signs have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the term ‘Connect’, which constitutes the earlier mark and plays an independent and distinctive role at the beginning of the contested sign. The signs differ in the additional word ‘System’ of the contested sign.

As mentioned above, the beginning of the contested sign ‘Connect’ coincides with the earlier mark. In this context, it is important to notice that 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. The degree of visual similarity must therefore be deemed average.

The same considerations, as above, apply from the conceptual and aural perspective and the signs must be considered similar to an average degree on these two levels of comparison.

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, considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average.

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 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).

Although the distinctive character of an earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 16/03/2005, T-112/03 ‘Flexi Air’).

While it is true that the more distinctive the earlier mark, the greater will be the likelihood of confusion, given the identity and similarity of the goods covered by the respective marks, combined with a visual and phonetic similarity of the signs they consist of, suffice to create a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR. Since likelihood of confusion is the specific prerequisite for protection of the earlier mark, that protection applies irrespective of whether the earlier mark has only weak distinctiveness (see judgment of 12/01/2006, T-147/03 ‘Quantum’).

The contested goods are partly identical and partly similar to the ones covered by the earlier mark. They are directed at the public at large and at professionals with a higher than average degree of attentiveness.

The signs contain the same word ‘Connect’ which is the only element of the earlier mark and the first and an independent element of the contested sign. Although, this element is weak for the relevant goods, as mentioned above, the differentiating term ‘System’ of the contested sign is equally weak in relation to the goods in question. Consequently, all the aforementioned factors which make the marks similar to an average degree on all three levels of comparison will induce a likelihood of confusion on the part of the relevant public.

Account is taken also 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

In the present case, consumers may legitimately believe that the contested trade mark, ‘Connect System’, is a new brand line, a new model or a recent development under the opponent’s mark, considering that it will be applied to goods which are identical or similar to those marketed under the ‘Connect’ brand.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, including likelihood of association, on the part of the English-speaking part of the public and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 073 321. 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.

It follows that the contested trade mark must be rejected for all the contested goods.

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

Gueorgui IVANOV

Monika CISZEWSKA

Ewelina ŚLIWIŃSKA

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.