OPPOSITION No B 2 423 401

H-D U.S.A., LLC, 3700 West Juneau Avenue, Milwaukee, Wisconsin 53208, United States of America (opponent), represented by Mathys & Squire LLP, The Shard 32 London Bridge Street, London  SE1 9SG, United Kingdom (professional representative)

a g a i n s t

Semikron International GmbH, Sigmundstr. 200, 90431 Nürnberg, Germany (applicant), represented by Harald Kobolla, Sigmundstr. 200, 90431 Nürnberg, Germany (employee representative).

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

DECISION:

1.        Opposition No B 2 423 401 is partially upheld, namely for the following contested goods:

Class 7:                Electric machines for motor or generator operation; Linear motors, Reluctance motors, Axial flow motors, Asynchronous motors, Synchronous motors, Rod motors; Electric motors for machines (other than electric motors for land vehicles); Linear actuators; Electric motors for test benches; Electric motors for powering valves in internal combustion engines, for turbo compressors, for generators, for brakes, for actuators; (all included in class 7).

Class 9:                Apparatus and instruments for accumulating electricity.

Class 12:        Electric motors; Linear motors, reluctance motors, axial flux motors, asynchronous motors, synchronous motors, bar motors, all being for vehicles; Electric motors being main or auxiliary drives in land vehicles with or without an additional internal combustion engine; (all included in class 12).

2.        European Union trade mark application No 12 809 166 is rejected for all the above goods. It may proceed for the remaining goods and 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 12 809 166. The opposition is based on European Union trade mark registration No 1 525 195 and non-registered trade mark ‘DYNA’ in Ireland and the United Kingdom. The opponent invoked Articles 8(1)(b), 8(4) and 8(5) 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 12:        Motorcycles, motorcycle engines and parts and accessories therefor not included in other classes.

The contested goods and services, after a limitation, are the following:

Class 7:        Electric machines for motor or generator operation; Linear motors, Reluctance motors, Axial flow motors, Asynchronous motors, Synchronous motors, Rod motors; Electric motors for machines (other than electric motors for land vehicles); Linear actuators; Electric motors for test benches; Electric motors for powering valves in internal combustion engines, for turbo compressors, for generators, for brakes, for actuators; (all included in class 7).

Class 9:        Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for controlling and regulating electric power in vehicles; Apparatus for controlling and regulating electric motors in vehicles; Apparatus for controlling and regulating electric motors in the drive trains of vehicles with or without an internal combustion engine; Apparatus for controlling and regulating electric motors for machines or machine tools; Apparatus for controlling and regulating electric motors for test benches; Computer programs recorded on machine-readable data carriers for activating, adapting and optimising computerised or processor-controlled electronic or electric apparatus.

Class 12:        Electric motors; Linear motors, reluctance motors, axial flux motors, asynchronous motors, synchronous motors, bar motors, all being for vehicles; Electric motors being main or auxiliary drives in land vehicles with or without an additional internal combustion engine; (all included in class 12).

Class 42:        Scientific and technological services and research services; Design, development and maintenance of computer hardware and software; Design, development and maintenance of computer hardware and software for operating computerised or processor-controlled electronic or electric apparatus, for controlling and regulating electric power in vehicles; For controlling and regulating electric motors in the drive trains of vehicles.

        

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 7

The contested electric machines for motor or generator operation; Linear actuators; (all included in class 7) are all components that are used in or for an engine and they are therefore complementary to the opponent’s motorcycle engines in Class 12. Furthermore, the goods coincide in producer, end user and distribution channels. Therefore, they are similar to a high degree.

The contested linear motors, Reluctance motors, Axial flow motors, Asynchronous motors, Synchronous motors, Rod motors; Electric motors for machines (other than electric motors for land vehicles); Electric motors for test benches; Electric motors for powering valves in internal combustion engines, for turbo compressors, for generators, for brakes, for actuators; (all included in class 7) may have the same producers (engine/motor manufacturers) as the opponent’s motorcycle engines in Class 12. The primary nature of the compared goods that are machines designed to convert energy into useful mechanical motion is still the same, irrelevant to the exact application of the engine/motor. It is noted that it appears from Collins dictionary, that engine is a synonym of motor. Therefore, the goods in conflict are considered to be similar.

Contested goods in Class 9

The contested apparatus and instruments for accumulating electricity which include electric batteries for vehicles are similar to motorcycles of the earlier mark as they can coincide in end user and distribution channels. Furthermore they are complementary.

However, the contested apparatus and instruments for conducting, switching, transforming, regulating or controlling electricity are dissimilar to the opponent’s motorcycles, motorcycle engines and parts and accessories therefor not included in other classes as they have a different user, nature and purpose and are not complementary. Furthermore, they have different channels of trade.

The contested apparatus for controlling and regulating electric power in vehicles; apparatus for controlling and regulating electric motors in vehicles; apparatus for controlling and regulating electric motors in the drive trains of vehicles with or without

an internal combustion engine are dissimilar to motorcycles, motorcycle engines and

parts and accessories therefor not included in other classes as they have a different

user, nature and purpose and are not complementary. They also have different channels of trade.

The contested apparatus for controlling and regulating electric motors for machines or machine tools; apparatus for controlling and regulating electric motors for test benches are dissimilar to motorcycles, motorcycle engines and parts and accessories therefor not included in other classes of the earlier mark as they have a different user, nature and purpose and are not complementary. Furthermore, they have different channels of trade.

The contested computer programs recorded on machine-readable data carriers for activating, adapting and optimising computerised or processor-controlled electronic or electric apparatus are dissimilar to the opponent’s motorcycles, motorcycle engines and parts and accessories therefor not included in other classes. Although these goods may be used together that is not sufficient to render them similar as nowadays computer programs are used in almost every sphere of activity. These goods in conflict are produced with different expertise, target different consumers and

have a different nature and different distribution channels.

Contested goods in Class 12

The contested electric motors; linear motors, reluctance motors, axial flux motors, asynchronous motors, synchronous motors, bar motors, all being for vehicles; electric motors being main or auxiliary drives in land vehicles with or without an additional internal combustion engine; (all included in class 12) overlap with motorcycle engines of the earlier mark as the opponent’s goods can take the form of the applicant’s motors for vehicles. It is noted that a motor is defined in the online Collins English dictionary as the engine, especially an internal-combustion engine, of

a vehicle. Thus these goods are identical.

Contested services in Class 42

The contested scientific and technological services and research services are services provided in relation to the theoretical and practical aspects of complex fields of activities. These services are provided by members of professions such as chemists, physicists, engineers, computer programmers etc. The contested design, development and maintenance of computer hardware and software; design, development and maintenance of computer hardware and software for operating computerised or processor-controlled electronic or electric apparatus, for controlling and regulating electric power in vehicles; for controlling and regulating electric motors

in the drive trains of vehicles are IT services provided by computer scientists and IT experts. On the other hand the motorcycles, motorcycle engines and parts and accessories therefor not included in other classes of the earlier mark are manufactured goods provided through garages and motor cycle dealers. These goods and services are dissimilar. The fact that the applicant’s services may be used in conjunction with the opponent’s goods is not enough to render these goods and services similar. Their nature and purpose are different and they have a different end

user and different channels of trade. The expertise required in providing these goods

and services is different.

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 business customers with specific professional knowledge. The degree of attention will vary from average to high depending on the frequency of purchase, the specialised nature and the cost of the relevant goods.

3. The signs

DYNA	DYNATRAIN
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.

The common element ‘DYNA’ is meaningful in certain territories. For example in English this is a compound form used to indicate ‘power’. However, in other territories, this word lacks any clear meaning. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public such as France, who will understand the second verbal element of the contested sign ‘TRAIN’, but not the verbal element ‘DYNA’.

The earlier mark is a word mark consisting of the verbal element ‘DYNA’ which has no French meaning and which has an average degree of distinctiveness in relation to the goods in question.

As regards the contested sign which is composed of one verbal element, ‘DYNATRAIN’, it is noted that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (22/06/1999, C 342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 25), the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (06/10/2004, T 356/02, ‘VITAKRAFT’, paragraph 51).

The French-speaking part of the relevant public will perceive the word ‘TRAIN’ as meaningful, and will therefore perceive the contested sign as a conjunction of the verbal elements ‘DYNA’ and ‘TRAIN’. The French word ‘TRAIN’ will be understood as meaning a number of carriages, cars, or trucks which are all connected together and which are pulled by an engine along a railway. In relation to the goods in question, this element will be non-distinctive, as it describes that the goods are for, or in relation to, trains, e.g. electric engines for trains. The verbal element ‘DYNA’ has an average degree of distinctiveness in relation to the goods, as explained above.

As both signs are word marks none of them has any elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the element ‘DYNA’ which constitutes the whole earlier mark and appears as the first element of the contested sign. This coinciding element is also the only distinctive element of the contested sign. The marks differ in the verbal element ‘TRAIN’ of the contested sign which is non-distinctive.

Visually 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.

Therefore, and as the signs merely differ in a non-distinctive element, the signs are visually and aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of one of the elements in the contested sign as explained above, that concept is non-distinctive for the goods at issue and, therefore, incapable of establishing a relevant conceptual difference between the signs. 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.

According to the opponent the earlier trade mark has a reputation in connection with all the goods for which it is registered and enjoys enhanced distinctiveness. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. It is pointed out that the evidence to prove use submitted by the opponent on 08/01/2016 cannot be taken into account in the assessment of enhanced distinctiveness as it was received after the deadline to substantiate the opposition namely 25/04/2015. Furthermore, no explicit request for proof of use was filed by the applicant. The admissible evidence filed consists of the following documents, which were submitted on 24/04/2015:

• A witness statement of Ms. Linda Heban, vice-president and Chief Trademark Counsel of the opponent, dated 23/04/2015 giving global annual sales from 2008-2014 for Harley-Davidson and stating that Harley-Davidson motorcycles have featured in numerous well-known films. The number of dealerships in EU countries from October 2013 is shown. The statement puts forward that the DYNA trademark has been used in Europe since 1991 when the 1991 Model FXDB DYNA GLIDE STURGIS was launched and in which year 1,546 of these motorcycles were assembled. Dyna motorcycle models are classified as custom motorcycles which are ‘laid-back, high image machines intended for cruising’. Promotional worldwide expenditure figures for the Harley-Davidson organisation for each year between 2008 and 2014 are given and are given for the years between 2008 and 2011 for the United Kingdom and Ireland.

• Exhibit LH1: a copy of CoreBrand’s (a brand consultancy organisation) report 2012 showing that it ranked the Harley-Davidson brand number 3 in the CoreBrand Top 100 BrandPower Rankings 2012.

• Exhibit LH2: an extract from the website of Interbrand (2014) one of the world’s leading branding firms, showing that it valued the Harley-Davidson brand at $4,772m USD and ranked the brand at number 87 in its ‘Top 100 brands’.

• Exhibit LH3: an extract from Forbes Magazine dated 07/01/2002 naming the Harley-Davidson Organisation as ‘Company of the year’.

• Confidential Exhibit A setting out details of revenue from sales of motorcycles and the quantity of motorcycles sold across the E.U. from 2008-2012.

• Exhibit LH4: An extract from the book ‘1903-1993 HARLEY-DAVIDSON HISTORICAL OVERVIEW’ published in 1994 and an article from the Harley-Davidson museum archives giving details of various motorcycles in the DYNA series such as the 1991 Model FXDB Dyna GLIDE STURGIS, the 1992 Model FXDB Dyna Glide Daytona motorcycle.

• Exhibit LH5: Screenshots from 26/03/2015 from the official Harley-Davidson website showing earlier marks in the DYNA series such as Harley-Davidson Dyna FXDWG Wide Glide 1690cc and Harley –Davidson –DYNA1690cc FXDF Dyna Fat Bob and accessories therefor.

• Exhibit LH6: A spreadsheet outlining the segment structure-touring, custom, performance, standard, duals, recognised by the ACEM, the motorbike Industry in Europe.

• Exhibit LH7: A table produced by ACEM showing market share in the custom segment. It is noted that custom cycles accounted for 15% and 14% of the market in 2013 and 2014 respectively and that Harley-Davidson had a market share of 67.2% and 63.9% respectively for these custom motorcycles in the corresponding years.

• Exhibit LH8: Extracts from the 2009, 2010, 2011, 2012, 2013 and 2014 model year line catalogues showing Dyna models such as FXDB Dyna Street Bob, FXDF Dyna Fat Bob, FXDC Dyna Super Glide Custom, FXDWG Dyna Wide Glide.

• Exhibit LH9: An extract from the 2003 Harley-Davidson motorcycle catalogue showing the Dyna Glide, FXDWG Dyna Wide Glide.

• Confidential Exhibit B: Details of revenue from sales of DYNA motorcycles and the quantity of DYNA motorcycles sold across the European Union from 2009-2014.

• Exhibit LH10: Six invoices dated between 14/06/2012 and 18/06/2013 issued by the opponent and affiliated companies to authorised dealers in the Netherlands, Germany, Denmark (2 invoices), Lithuania and Belgium, each for one motorcycle.

• Exhibit LH11: Some press articles about the television programme ’Sons of Anarchy’ which features Harley-Davidson motorcycles from the UK national newspaper ‘The Guardian’ (21/09/2010), the ‘Hollywood Reporter’ (13/06/2012), the UK publication ‘GQ’ (18/08/2010) and an online blog listing the bikes in the programme (28/07/2014). The blog mentions Harley Davidson Dyna Super Glide, Harley Davidson Dyna Super Glide Sport and Harley Davidson Dyna Street Bob.

• Exhibit LH12:

1. An extract from Bonhams, auctioneers dated 06/02/2014 entitled ‘Pope Francis’ Harley-Davidson to be sold by Bonhams for charity’ and containing the following: ’The pope’s 2013 Harley-Davidson Dyna Super Glide goes for auction at the Bonhams Paris sale.’

2. An extract from the U.K. newspaper ‘The Independent’, dated 06/02/2014, stating that ‘the money raised from the sale of the custom 2013 Dyna Super Glide on Thursday will go help Caritas Roma run its soup kitchen and hostel’.

3. An extract from the U.K. national newspaper ’The Guardian’, dated 06/02/2014, stating that ‘Pope Francis was presented with the Harley-Davidson Dyna Super Glide in June last year, and signed its fuel tank’ and ‘the reserve price for the Dyna Super Glide had been just €12,000’.

• Exhibit LH13: A copy of the opponent’s publication ‘2014 Harley-Davidson EMEA Motorcycle sales tool’ where ‘The Dyna Story’ is given and where the family model ‘DYNA’ is specified after each DYNA motorcycle.

• Exhibits LH14 and LH15: Extracts from the 2010, 2011, 2012, 2013 and 2014 Harley-Davidson catalogues showing evidence of parts and accessories available for the purchase of the DYNA family of motorcycles.

• Exhibit LH16: Sales figures for the Harley-Davidson catalogue which may be sold or given free of charge at the dealers’ discretion for the years 2009, 2010, 2011, 2012, 2013 and 2014.

• Confidential Exhibit C showing details of revenue from sales of all Harley- Davidson DYNA parts and accessories for each year from 2008-2012, broken down by country.

• Exhibit LH17: Three invoices for DYNA motorcycle parts and accessories issued by the opponent and affiliated companies between 28/06/2010 and 11/06/2012 to authorised dealers in Poland, Austria and Belgium showing the sale of some items.

• Exhibit LH18: Statistics from the opponent on the number of test rides booked and taken in Europe, broken down by country, in 2012, 2013 and 2014.

• Exhibit LH19: catalogues from the May Cheong Group, licensed by the Harley-Davidson Organisation to manufacture model motorcycles including DYNA model motorcycles. These feature motorcycles such as 2008 Harley-Davidson Dyna Super Glide Sport, 2001 Harley-Davidson Dyna Super Glide Sport, 2003 Harley-Davidson Dyna Super Glide Sport, 2006 FXDBI Dyna Street Bob, 2003 Dyna Super Glide Sport, 1997 FXDWG Dyna Wide Glide, 1997 FXDL Dyna Low Rider, 2000 FXDL Dyna Low Rider, 2002 ‘FXDL Dyna Low Rider.

• Exhibit LH20: A copy of Harley-Davidson Organisation European Advertising and Corporate Identity Guidelines 2003.

• Exhibit LH21: A representative sample of advertisements and press articles advertising DYNA motorcycles from Harley-Davidson dealerships in the United Kingdom, Germany, France and Italy showing ‘The new DYNA switchback’, Dyna FXDB Street Bob, Dyna FLD Switchback, Dyna Fat Bob, FXDC Dyna Super Glide, FXDWG Dyna Wide Glide FXDF Dyna Fat Bob.

• Confidential Exhibit D giving statistics for visitors to the Harley-Davidson Website in September 2012 and September 2013.

• Exhibit LH22: Advertising and promotional material from the HOG (Harley Owners Group, an international organisation of Harley-Davidson enthusiasts founded and sponsored by the Harley-Davidson Organisation) Magazine between 2007 and 2014, showing Harley-Davidson motorcycle models such as Dyna low rider. The opponent claims that as a result of this magazine, the Harley Owners Group is knowledgeable as to the different model motorcycles available from the Harley-Davidson Organisation.

• Exhibit LH23: the 2013 EMEA Events Recap showing that Harley–Davidson events were very well attended. For example, the HOG 30th Anniversary Event at St Tropez, France from 02-05/05/2013 had approximately 13,000 attendees. The Ireland Bike Fest in Killarney, Ireland from 31/05/2013-03/06/2013 had approximately 3,500 attendees.

• Exhibit LH24 & 25: Photographs of the Eurofestival at St Tropez, France from 10-13/05/2012 and the Ireland Bike Festival in Killarney, Ireland from 01-03/06/2013.

• Exhibit LH26: Advertisements in the following publications: ‘Motor Cycle News’, 11/05/2005, ‘the Telegraph’ motoring section, 28/03/2009, ‘Head to Head, May 2007’, ‘Financial Times’, 08-09/09/2007, ‘Motorcycle News’, 04/04/2007,’GQ’, August 2008, ‘Motorcycle’, October 2008, ‘Ride’, 2008, ‘Daily Star Weekend’, 18/10/2009, ‘Fastbikesmag’, February , 2009, ‘Daily Star’ 13/08/2010, ‘FHM’, May 2010. ‘The Sun’, 19/02/2010, ‘Ride’, November 2011 and ’MCM supplement 07/05/2003’ which show Harley-Davidson motorcycles and information relating thereto and cover the history of the company Harley-Davidson. These publications show use of Harley Dyna Glide 1340 and Harley-Davidson Dyna Glide 1450. In the article relating to Harley Dyna Glide 1340 the following phrase appears ‘The Dyna was faster than I expected’.

• Exhibit LH27: Photographs of the awards in 1998 and 1999 of ’Machine of the year’ in the customs/cruisers category, awarded by Motor Cycle News, to the Harley-Davidson DYNA SUPER GLIDE SPORT motorcycle.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness or reputation through its use.

Much of the evidence provided relates to the company Harley-Davidson and plays no part in proving enhanced distinctiveness or reputation of the earlier mark ‘DYNA’. For example the first three exhibits relate to Harley-Davidson’s ranking as a company and as a brand; Confidential Exhibits A and C refer to revenue from the sale of all Harley-Davidson motorcycles and parts and accessories for all Harley-Davidson motorcycles. Confidential Exhibit D refers to visits to the Harley-Davidson site as a whole. Any reputation that the mark ‘Harley-Davidson’ might have acquired cannot be automatically transferred to the ‘DYNA’ mark. Furthermore, it is noted from Exhibit

LH7 that custom motorcycles accounted for merely 15% and 14% of the motorcycle market in 2013 and 2014 respectively which suggests that the motorcycles produced under the Dyna mark represent only a portion of all motorcycles produced by the opponent. It can be seen from the evidence provided that some use of the mark ‘DYNA’ has been made. For example, Exhibit LH13 mentions ‘The Dyna Story’ and the family model ’DYNA’ is specified after each ‘DYNA’ motorcycle. However, these exhibits come from the opponent. There is no independent evidence that shows that ‘DYNA’ on its own has acquired reputation or higher distinctiveness (whether by motorcycle enthusiasts or not) in the nature of for example, results of opinion polls or market surveys. In addition, in the independent evidence provided, for example the newspaper and magazine articles, the mark ‘DYNA’ is always accompanied by other elements such as ‘Harley- Davidson’, ‘Super Glide’, ‘Super Glide Sport’, ‘Street Bob’ and ‘Glide’. Even in the material emanating from the opponent, ‘DYNA’ is often accompanied by other elements such as, ‘Glide Daytona’, ‘Wide Glide’, ‘Fat Bob’, ’Street Bob’, ‘Switchback’, ‘Low Rider’ and model and year numbers. The Office agrees with the opponent that use of a trademark can be proved where a mark is combined with another trademark but it does not follow that reputation can be proven for a mark used in connection with a second trademark as it is not clear that the public will recognise the mark on its own.

Regarding the invoices submitted it is noted that they concern very few items. On the invoices for motorcycles the mark DYNA does not always appear and when it does it is in connection with ‘Super Glide’ and ‘Street Bob’.

As regards the statistics and revenue figures given in the witness statement, and the revenue information from 2009-2014 given in Confidential Exhibit B, as far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. In the present case, given the insufficiency of the independent evidence mentioned above, it is considered that the evidence provided does not demonstrate that the earlier trade mark acquired an enhanced distinctiveness, let alone reputation through its use.

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

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

For the purposes of the global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). This is also true for consumers with a high degree of attention, since these customers would also need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

In the present case the contested goods are partly identical, partly similar to various degrees and partly dissimilar and the contested services are dissimilar to the goods of the earlier mark.

The signs differ only in a non-distinctive element, as explained above under section c) of this decision. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. On the other hand, consumers pay less attention to those elements in a trade mark that are non-distinctive. In the present case, the additional element in the contested sign, ‘TRAIN’, has a very limited impact on the overall impression. Consequently, consumers will focus on the element ‘DYNA’, from which the coincidence with the earlier mark arises. It follows, that the difference between the signs is clearly not sufficient to outweigh the high visual and aural similarity and to exclude a likelihood of confusion. Taking into consideration the imperfect recollection, this is also the case for consumers with a high degree of attention.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 1 525 195. 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.

The fact that the applicant’s mark ‘DYNATRAIN’ refers to the company ‘Compact Dynamics’, a subsidiary of the applicant and the fact that this mark was registered in Germany does not detract from the likelihood of confusion between the marks at hand. As seen above, the signs have been found to be visually and aurally highly similar and part of the contested goods are identical or similar to various degrees.

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

The contested apparatus and instruments for conducting, switching, transforming, regulating or controlling electricity; Apparatus for controlling and regulating electric power in vehicles; Apparatus for controlling and regulating electric motors in vehicles; Apparatus for controlling and regulating electric motors in the drive trains of vehicles with or without an internal combustion engine; Apparatus for controlling and regulating electric motors for machines or machine tools; Apparatus for controlling and regulating electric motors for test benches; Computer programs recorded on machine-readable data carriers for activating, adapting and optimising computerised or processor-controlled electronic or electric apparatus in Class 9 and the contested services in Class 42, namely scientific and technological services and research services; Design, development and maintenance of computer hardware and software; Design, development and maintenance of computer hardware and software for operating computerised or processor-controlled electronic or electric apparatus, for controlling and regulating electric power in vehicles; For controlling and regulating electric motors in the drive trains of vehicles are dissimilar to the goods of the earlier mark. 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 and services cannot be successful.

The Opposition Division will continue with the assessment of the opposition based on

Article 8(5) EUTMR in respect of the remaining contested goods and services.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent invoked Article 8(5) EUTMR in connection with European Union trade

mark registration No 1 525 195, for which the opponent claims repute in the whole European Union and each individual Member State in relation to all of the goods on which the opposition is based.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has an enhanced distinctiveness, not to mention a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on Article 8(5) EUTMR.

The Opposition Division will conclude with the assessment of the opposition based on Article 8(4) EUTMR in respect of the remaining contested goods and services.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. The right under the applicable law

The opposition is based on a non-registered trade mark used in the United Kingdom and Ireland. The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods and services originate from the opponent. In other words, the public would be likely to believe that goods and services put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

2. The opponent’s right vis-à-vis the contested trade mark

The contested trade mark must be likely to lead the public to believe that goods or services to be offered by the applicant are the opponent’s goods and services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s apparatus and instruments for conducting, switching, transforming, regulating or controlling electricity; Apparatus for controlling and regulating electric power in vehicles; Apparatus for controlling and regulating electric motors in vehicles; Apparatus for controlling and regulating electric motors in the drive trains of vehicles with or without an internal combustion engine; Apparatus for controlling and regulating electric motors for machines or machine tools; Apparatus for controlling and regulating electric motors for test benches; Computer programs recorded on machine-readable data carriers for activating, adapting and optimising computerised or processor-controlled electronic or electric apparatus in Class 9 and the applicant’s services in Class 42, namely scientific and technological services and research services; Design, development and maintenance of computer hardware and software; Design, development and maintenance of computer hardware and software for operating computerised or processor-controlled electronic or electric apparatus, for controlling and regulating electric power in vehicles; For controlling and regulating electric motors in the drive trains of vehicles in the belief that they are the opponent’s.

Furthermore, the public is unlikely to be misled where the contested goods and services are dissimilar to those upon which the opponent’s goodwill has been built.

The goods and services

The goods and services have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings where it was found that the contested goods apparatus and instruments for conducting, switching, transforming, regulating or controlling electricity; Apparatus for controlling and regulating electric power in vehicles; Apparatus for controlling and regulating electric motors in vehicles; Apparatus for controlling and regulating electric motors in the drive trains of vehicles with or without an internal combustion engine; Apparatus for controlling and regulating electric motors for machines or machine tools; Apparatus for controlling and regulating electric motors for test benches; Computer programs recorded on machine-readable data carriers for activating, adapting and optimising computerised or processor-controlled electronic or electric apparatus in Class 9 and the contested services in Class 42, namely scientific and technological services and research services; Design, development and maintenance of computer hardware and software; Design, development and maintenance of computer hardware and software for operating computerised or processor-controlled electronic or electric apparatus, for controlling and regulating electric power in vehicles; For controlling and regulating electric motors in the drive trains of vehicles are dissimilar to the goods of the earlier mark.

Under these circumstances, the Opposition Division finds it unlikely that the opponent’s customers would mistake the applicant’s goods and services for those of the opponent (even though the signs have been found similar to a high degree).

In view of the cumulative nature of this provision it is redundant to further analyse the remaining requirements.

Therefore, the opposition is not well founded under Article 8(4) EUTMR and is rejected insofar as it is based on this article for the remaining contested goods and 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 shall 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

Solveiga BIEZA

Cecilie Leth BOCKHOFF

Michele M.  BENEDETTI-ALOISI

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.