OPPOSITION DIVISION

OPPOSITION No B 2 764 200

H-D U.S.A., LLC, 3700 West Juneau Avenue, Milwaukee, Wisconsin 53208, United

States of America (opponent), represented by Čermák a Spol., Elišky Peškové 15,

150 00 Praha 5, Czech Republic (professional representative)

a g a i n s t

Panhead s.r.o., Dr. E. Beneše 512, 765 02 Otrokovice, Czech Republic (applicant),

represented by Zdeněk Kučera, Dlouhá 207, 763 15 Slušovice, Czech Republic

REASONS

The opponent filed an opposition against all the goods and services of European

Union trade mark application No 15 146 046 for the word mark ‘HARLEY PUB’. The

opposition is based on, inter alia, European Union trade mark registrations

No 662 148 and No 3 530 219 both for the word mark ‘HARLEY’. As regards these

European Union trade mark registrations, the opponent invoked Article 8(1)

(b) EUTMR.

PRELIMINARY REMARKS

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

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.

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The opposition is based on more than one earlier trade mark. The Opposition

other classes, stationery, books, bookbinding material, bumper stickers,

checkbook covers, playing cards, calendars, decalcomanias, stickers,

photo albums, posters, typewriters, office requisites (except furniture),

binders, notebooks, printed publications and printed matter, road atlases,

service manuals for motorcycles, parts catalogs for motorcycles,

accessory catalogs and lists instruction books and handbooks, greeting

cards, banners relating to motorcycling, note paper, pens and pencils,

paper hats, paper table covers, paper napkins, photographs, pictures,

artists’ materials, paint brushes, adhesives for stationery or household

purposes, and bags of paper or plastic for wrapping and packing.

sponges (scouring), bottle openers, ice buckets, mugs, bowls, brushes,

cake models, candle extinguishers not of precious metal, candle holders

not of precious metal, cake models, chamois leather of cleaning, china

ornaments, cleaning rags (cloth), cloths for cleaning, plates, decanters,

coasters (not made of paper), coolers, corkscrews, glassware, cups (not of

precious metal), soap dishes, soap dispensers, drinking flasks, trash cans,

polishing gloves, pottery, salt and pepper shakers (not of precious metal),

figurines of porcelain, terra-cotta or glass, tableware, tankards.

Class 43: Services for providing food and drink; temporary accommodation;

restaurant and bar services, cafes, cafeterias, canteen services, hotel

material; photographs; postcards; stationery shop articles; mats for beer

glasses; packaging of paper and plastic for packaging beer.

Class 21: Kitchen utensils; devices and containers; dinner sets; food serving

combinations; plates; tableware of stainless steel, porcelain, kitchenware

glass, ceramics and plastics; pilsner drinking glasses; goods of glass,

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porcelain and ceramics for kitchen use and for use in restaurants and

canteens.

and non-alcoholic drinks and beverages; syrups and other preparations for

alcoholic (unfermented); fruit juice; aerated fruit beverages

boarding houses]; hotel services; guesthouses; restaurants; bar services;

service restaurants; mass catering; operating recreation facilities and

camps; providing of refreshments.

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 16

The contested postcards include, as a broader category, the opponent’s greeting

cards of earlier trade mark 1). 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 packaging of paper and plastic for packaging beer overlap with the

opponent’s bags of paper or plastic for wrapping and packing of earlier trade mark 1).

The contested mats for beer glasses and the opponent’s coasters (not made of

Plates are identically contained in the applicant’s list of goods and services and the

The contested kitchen utensils; devices and containers include, as broader

categories, the opponent’s household or kitchen utensils and containers (not of

Decision on Opposition No B 2 764 200 page: 4 of 9

precious metal or coated therewith) of earlier trade mark 2). Since the Opposition

Division cannot dissect ex officio the broad categories of the contested goods, they

The contested tableware of stainless steel is included in the broad category of the

glasses are included in the broad category of the opponent’s tableware of earlier

for kitchen use and for use in restaurants and canteens are included in the broad

categories of, or overlap with, the opponent’s glassware, porcelain and earthenware

not included in other classes of earlier trade mark 2). Therefore, they are identical.

The contested kitchenware plastics include, as a broader category, the opponent’s

household or kitchen utensils and containers (not of precious metal or coated

therewith) of earlier trade mark 2). Since the Opposition Division cannot dissect ex

officio the broad category of the contested goods, they are considered identical to the

opponent’s goods.

Contested goods in Class 32

The contested beer; light beers and lagers; flavored beers; mineral and aerated

waters and non-alcoholic drinks and beverages; syrups and other preparations for

making beverages; juices; fruit juices and fruit juice beverages, non-alcoholic

(unfermented); fruit juice; aerated fruit beverages (dealcoholised); aerated fruit juice

beverages and the opponent’s services for providing food and drink of earlier trade

mark 2) differ fundamentally in their natures (intangible services versus tangible

goods); however, they are closely related to each other, since they can be

complementary. It is essential for establishments where food and drinks are provided,

identically contained in the applicant’s list of goods and services and the opponent’s

list of goods and services for which earlier trade mark 2) is registered.

The contested mass catering; providing of refreshments; ice cream parlours are

included in the broad category of the opponent’s services for providing food and drink

of earlier trade mark 2). Therefore, they are identical.

The contested self-service restaurants; wine bar services; snack-bars are included in

the broad category of the opponent’s restaurant and bar services of earlier trade

mark 2). Therefore, they are identical.

The contested accommodation bureaux [hotels, boarding houses]; hotel services;

guesthouses; operating camps are included in the broad category of the opponent’s

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The contested operating recreation facilities and the opponent’s hotel services of

earlier trade mark 2) have some commonalities. It is common for hotel

other facilities for other sport activities). Therefore, these services have the same

establishments and are provided to the same consumers. Therefore, they are

b) 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 and services found to be identical or similar to various

degrees are directed at the public at large and also at the professional public. Some

of the goods and services at issue are specialised goods (e.g. the contested goods

of glass, porcelain and ceramics for kitchen use and for use in restaurants and

canteens in Class 21) and services (e.g. services for providing food and drink;

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 word ‘HARLEY’, which the earlier trade marks and the contested sign have in

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English is understood. It will be associated by the English-speaking part of the

European Union public with a family or given name of British origin. Consequently,

this element is associated with a concept.

The element ‘HARLEY’ of the earlier word marks is not descriptive, allusive or

element in the contested sign is also distinctive, as it has no connotations in relation

English-speaking public but also for all consumers within the whole European Union,

due to its common use in relation to establishments where beer and other drinks, and

sometimes also food, are sold.

The element ‘PUB’ of the contested word mark will bring to consumers’ minds the

concept mentioned above and, because the relevant goods and services are, inter

alia, kitchenware and tableware, also for use in restaurants and bars, in Class 21,

and beer, mineral and aerated waters and other non-alcoholic drinks and beverages,

services for providing food and drink and accommodation bureaux in Class 43, this

element is weak or non-distinctive for these types of goods and services.

the reader.

Visually and aurally, the signs coincide in (the sound of) the word ‘HARLEY’, which

is wholly reproduced in the first part of the contested sign. However, they differ in the

additional (sound of the) word ‘PUB’, which is weak or non-distinctive in the

contested sign and not present in the earlier marks.

Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic

content conveyed by the marks. The signs coincide in the concept of the name

d) Distinctiveness of the earlier marks

account in the global assessment of likelihood of confusion.

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According to the opponent, the earlier trade marks have been extensively used and

enjoy an enhanced scope of protection. However, for reasons of procedural

their distinctiveness per se. In the present case, the earlier trade marks, when taken

perspective of the public in the relevant territory. Therefore, the distinctiveness of the

e) 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.

Evaluating likelihood of confusion implies some interdependence between the

relevant factors and, in particular, a similarity between the marks and between the

goods or services. Therefore, a lesser degree of similarity between goods and

(22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). In the present case, due

to the types of goods and services in question, which may demand professional

knowledge and expertise, the relevant public consists of both general and business

consumers whose degree of attention is considered average.

In the present case, the goods and services are identical or similar to various

degrees. The earlier trade marks are examined as if they have a normal degree of

distinctiveness, as they cover goods and services that are identical or similar to

normal degree of inherent distinctiveness in sufficient to find a likelihood of confusion,

bearing in mind the remaining factors relevant to the present case, which are as

and the earlier trade marks have commonalities on all levels (visual, aural and

conceptual) and this is not affected by the degree of similarity between the goods

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In the present case, the coincidences in the signs are quite obvious and any

differences relate to only the weak or non-distinctive second element, ‘PUB’, in the

Therefore, it is highly conceivable that the relevant consumer will perceive the

different way according to the type of goods or services that it designates

English-speaking part of the public. As stated above in section c) of this decision, a

sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European

Union trade mark registrations No 662 148 and No 3 530 219. It follows that the

contested sign must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of

earlier trade marks 1) and 2), there is no need to assess the enhanced degree of

distinctiveness of the opposing marks due to their extensive use as claimed by the

opponent. The result would be the same even if the earlier marks enjoyed an

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former

Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the

Decision on Opposition No B 2 764 200 page: 9 of 9

According to Article 67 EUTMR, any party adversely affected by this decision has a

right to appeal against this decision. According to Article 68 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 for

appeal must be filed within four months of the same date. The notice of appeal will be

deemed to have been 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 Article 109(8) EUTMR

(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be