OPPOSITION No B 2 214 636

Comus International Zweiradteile und Sportartikel-Handelsgesellschaft mbH, ABC-Tower, Ettore-Bugatti-Str. 6-14, 51149 Köln, Germany (opponent), represented by Patentanwälte Buschhoff Hennicke Althaus, Kaiser-Wilhelm-Ring 24, 50672 Köln, Germany (professional representative)

a g a i n s t

MGF, 55 rue Pierre Charron, 75008 Paris, France (holder), represented by Cabinet Plasseraud, 66, rue de la Chaussée d'Antin, 75440 Paris Cedex 09, France (professional representative).

On 14/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 214 636 is partially upheld, namely for the following contested goods:

Class 12:        Bicycles, bicycles with electrical assistance, motorbikes, electric motorbikes, mopeds, electric mopeds, all-terrain vehicles, electric all-terrain vehicles, tricycles and quads with electric and hybrid motors, scooters, electric scooters, electric light vehicles, cycles, frames, kickstands, handlebars, brakes, rims, pedals, tires, wheels or saddles for cycles, electrically propelled go-karts, golf carts, electric golf vehicles, caddie carts, maintenance carts; vehicles; apparatus for locomotion by land, air or water; electric apparatus for locomotion by land, air or water; motors and engines for land vehicles; electric individual mobility media (vehicles), electric motors for vehicles; trailers (vehicles); trailer hitches for vehicles.

Class 18:        Leatherware, travel bags, handbags, wheeled bags, backpacks, beach bags, briefcases, suitcases, luggage, card cases (wallets), key cases (leather goods), sports bags, purses, unfitted vanity cases.

Class 25:        Clothing, belts (clothing), footwear (other than orthopedic footwear), headgear, caps, sportswear, gloves (clothing), neckties, footwear for sports.

2.        International registration No 1 131 219 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 131 219. The opposition is based on international trade mark registration No 1 066 502 designating the European Union and German trade mark registration No 30 454 782. 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 and services on which the opposition is based are the following:

1. Earlier international trade mark registration No 1 066 502

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

Class 25:        Clothing, footwear, headgear.

Class 28:        Games and playthings; gymnastic and sporting articles not included in other classes.

2. Earlier German trade mark registration No 30 454 782

As a preliminary remark, the correct list of goods and services on which the opposition is based in relation to this earlier right must be established.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

If the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

On 17/07/2013, the opponent filed a notice of opposition, indicating that the opposition is based on parts of the goods and services covered by the earlier German trade mark, namely vehicles; apparatus for locomotion by land; bicycles in Class 12, trunks and travelling bags in Class 18, and sporting and cultural activities in Class 41. Attached to the notice of opposition was a printout from German trade mark database, detailing the particulars of this trade mark registration as of 17/07/2013, in German; the goods and services mentioned in the printout are listed under Classes 11, 12, 14, 18, 21, 24, 25, 28 and 41.

On 21/12/2016, the opponent submitted further facts, evidence and arguments for substantiating its claims. These submissions contained an updated printout from German trade mark database, showing the particulars of the trade mark registration in question as of 20/12/2016. The document is in English, except for the list of goods and services in Classes 11, 14, 18, 21, 24 and 41 which is in German. The required English translation of the list of goods and services was submitted on the same day in a separate document. The translation shows that the scope of protection of this trade mark on 20/12/2016 covered goods and services in Classes 18 and 41 exactly as claimed in the notice of opposition, whilst goods in Class 12 were no longer protected by this trade mark registration. In conjunction with the information included in the database printout, it is clear that, on 24/10/2014, the trade mark proprietor requested a cancellation in relation to part of the goods and services. That explains the discrepancy between the information as initially claimed in the notice of opposition and the evidence filed later for substantiation purposes.

Since the evidence, together with the translation, filed in relation to earlier German trade mark registration No 30 454 782 only demonstrates the existence and validity of the opponent’s rights in relation to goods and services in Classes 18 and 41, but fails to prove its rights in relation to goods in Class 12, to that extent the opponent’s claims expressed in the notice of opposition must be rejected as unfounded.

Therefore, insofar as earlier German trade mark No 30 454 782 is concerned, the goods and services on which the opposition is based and which will be taken into account for the assessment of the opposition are the following:

Class 18:        Trunks and travelling bags.

Class 41:        Sporting and cultural activities.

The contested goods are the following:

Class 12:        Bicycles, bicycles with electrical assistance, motorbikes, electric motorbikes, mopeds, electric mopeds, all-terrain vehicles, electric all-terrain vehicles, tricycles and quads with electric and hybrid motors, scooters, electric scooters, electric light vehicles, cycles, frames, kickstands, handlebars, brakes, rims, pedals, tires, wheels or saddles for cycles, electrically propelled go-karts, golf carts, electric golf vehicles, caddie carts, maintenance carts; vehicles; apparatus for locomotion by land, air or water; electric apparatus for locomotion by land, air or water; motors and engines for land vehicles; electric individual mobility media (vehicles), electric motors for vehicles; trailers (vehicles); trailer hitches for vehicles.

Class 18:        Leather and imitation leather, leatherware, travel bags, handbags, wheeled bags, backpacks, beach bags, briefcases, suitcases, luggage, card cases (wallets), key cases (leather goods), sports bags, purses, unfitted vanity cases, parasols, umbrellas, walking sticks.

Class 25:        Clothing, belts (clothing), footwear (other than orthopedic footwear), headgear, caps, sportswear, gloves (clothing), neckties, footwear for sports.

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 12

Vehicles; apparatus for locomotion by land, air or water are identically contained in the list of the contested goods, as well as in the list of earlier mark 1.

The contested bicycles, bicycles with electrical assistance, motorbikes, electric motorbikes, mopeds, electric mopeds, all-terrain vehicles, electric all-terrain vehicles, tricycles and quads with electric and hybrid motors, scooters, electric scooters, electric light vehicles, cycles, electrically propelled go-karts, golf carts, electric golf vehicles, caddie carts, maintenance carts; electric individual mobility media (vehicles); trailers (vehicles) are included in the broader category of the opponent’s vehicles of earlier mark 1. Therefore, they are identical.

The contested electric apparatus for locomotion by land, air or water are included in the broader category of the opponent’s apparatus for locomotion by land, air or water of earlier mark 1. Therefore, they are identical.

The contested frames, handlebars, brakes, rims, pedals, tires, wheels or saddles for cycles; motors and engines for land vehicles; electric motors for vehicles; trailer hitches for vehicles are similar to the opponent’s vehicles of earlier mark 1. These goods are complementary, as the contested parts of vehicles, including those of bicycles, are indispensable for the use of vehicles, which again include bicycles. Such goods commonly originate from the same manufacturers. Furthermore, they are directed at the same circles of public and are distributed through the same channels.

The contested kickstands for cycles and the opponent’s vehicles (being a broad category that encompasses bicycles) of earlier mark 1 are similar to a low degree, because of the complementarity that cannot be denied between these goods and the fact that they are offered for sale side-by-side in the same sales outlets.

Contested goods in Class 18

Travel bags refer to the same goods as the opponent’s travelling bags of earlier mark 2. They are identical.

The contested leatherware, wheeled bags, backpacks, luggage, unfitted vanity cases overlap with the opponent’s travelling bags of earlier mark 2, insofar as these categories include various luggage items made from leather, fitted with wheels, suitable for carrying on the back, or for carrying toiletries when travelling. Therefore, they are identical.

The contested suitcases are included in the broader category of the opponent’s travelling bags of earlier mark 2. Therefore, they are identical.

The opponent’s clothing, footwear, headgear in Class 25 of earlier mark 1 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion. The contested handbags, beach bags, briefcases, card cases (wallets), key cases (leather goods), sports bags, purses are related to articles of clothing, headgear and footwear. This is because consumers are likely to consider the Class 18 goods as accessories that complement articles of outer clothing, headgear, beach-wear, sports-wear and even footwear as these goods are closely co-ordinated to match in style and aesthetic aspect. Furthermore, they are distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing, headgear and footwear to directly produce and market related bags and small leather goods. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

However, the contested leather and imitation leather refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for the opponent’s trunks, travelling bags or footwear) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels are quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s goods in Class 25 of earlier mark 1, or those in Class 18 of earlier mark 2.

Leather and imitation leather have no relevant commonalities with any of the opponent’s goods in Classes 12 or 28 either. The mere fact that vehicle seats, or sporting articles can be made from leather, or imitations of leather, is insufficient for a finding of similarity, as the relevant public, distribution channels or usual manufacturers are not the same. The differences between the natures and purposes of these goods are vast.

The contested parasols are light umbrellas carried for protection from the sun; umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod; walking sticks are canes or other staffs used as aids for walking. The nature of these goods is very different from that of the opponent’s goods in Classes 12, 18, 25 or 28. They serve very different purposes (protection from sun/rain, assistance with walking, as opposed to means of transport, protecting the human body, playthings and sporting equipment, storage or carrying things when travelling). They do not usually have the same retail outlets and are not usually made by the same manufacturers.

As regards the opponent’s services in Class 41 of earlier mark 2, they have no point of contact with the remaining contested goods whatsoever. First of all, they have fundamentally different natures, since services are intangible whereas goods are tangible. Moreover, the purpose of sporting and cultural activities is to provide amusement or pastime, which has nothing to do with the practical applications of the remaining contested goods. These services are provided by undertakings that are not involved in the manufacture of raw leather materials, umbrellas, parasols or walking aids.

Therefore, the contested leather and imitation leather, parasols, umbrellas, walking sticks are dissimilar to all of the opponent’s goods and services of the two earlier marks.

Contested goods in Class 25

Clothing, footwear (other than orthopedic footwear), headgear are identically contained in the list of the contested goods and that of earlier mark 1 (taking into account the fact that orthopaedic footwear by definition is outside of the scope of Class 25).

The contested belts (clothing), gloves (clothing), neckties are included in the broader category of the opponent’s clothing of earlier mark 1. Therefore, they are identical.

The contested caps are included in the broader category of the opponent’s headgear of earlier mark 1. Therefore, they are identical.

The contested sportswear overlaps with the opponent’s clothing of earlier mark 1, insofar as both categories include clothing for sports. Therefore, they are identical.

The contested footwear for sports is included in the broader category of the opponent’s footwear of earlier mark 1. Therefore, they are identical.

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 to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness will vary from average to high, depending on the price, purchasing frequency, sophistication, or terms and conditions of the purchased goods.

For example, taking into consideration the price of cars, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T-486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 39-42). Along the same lines of reasoning, the public’s degree of attention will be high in relation to other kinds of vehicles, apparatus for locomotion by land, air or water.

3. The signs

S’cool	i-scool
Earlier trade marks	Contested sign

The relevant territories are the European Union and Germany, respectively (since earlier international registration No 1 066 502 has protection in the entire European Union, and the relevant territory of earlier German trade mark registration No 30 454 782 is Germany).

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).

In relation to earlier international registration designating the European Union, it is noted that 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case and for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on German-speaking part of the public such as Germany, which coincides in the relevant territory with the earlier German trade mark.

Both earlier marks are comprised of the word ‘S’cool’, and the contested sign is the word ‘i-scool’. Neither of them exists as such in German, nor do they contain any element that can be considered visually more eye-catching than the others.

The earlier marks contain the English word ‘cool’ which has entered the German language and may be associated with, inter alia, ‘very good’ (information extracted from http://www.duden.de/rechtschreibung/cool on 14/06/2017). Even though this word is laudatory for the goods in question, it has to be borne in mind that the average consumer tends to perceive trade marks as a whole and does not proceed to artificially dissecting them. Taken as a whole, ‘S’cool’ only vaguely evokes the laudatory meaning and is endowed with an average degree of inherent distinctiveness.  

As regards the contested sign, it is noted that although the word ‘scool’ contains the letter string ‘cool’, it can be reasonably assumed that this meaning will not be singled out by the public. On the other hand, the contested sign contains the letter ‘i', separated from the rest of the sign by a hyphen, which can be perceived as, inter alia, the frequently used abbreviation of the words ‘intelligent’, ‘interactive’ (‘interaktiv’ in German) or ‘Internet’. As such, when joining the prefix ‘i-’ to a noun, the final result conveys a meaning of something that provides either of those qualities. In interpreting the prefix ‘i-’, consideration should be given to the nexus between the abbreviation and the rest of the sign (i.e. the word ‘scool’) and the underlying context of the contested goods. Although it cannot be ruled out that ‘scool’ is perceived by a part of the public as a misspelling of the English word ‘school’ with the meaning of ‘an educational institution’, for a large part of the public this word lacks any clear meaning and it has an average degree of inherent distinctiveness; the assessment of the opposition will proceed on this basis.

For the contested goods in Class 12, from the possible meanings of the prefix ‘i-’ only the notion of ‘intelligent’ is congruent, as it is a quality commonly offered nowadays for systems that assist drivers by applying different technologies to carry out certain functions or make operations easier (decision of 04/05/2015, R 3029/2014-5 – ‘I-MOVE’; § 38). To that extent, this element is weak, but enjoys an average degree of distinctiveness for the rest of the goods in other classes for which it is fanciful.

Conceptually, although the earlier marks contain the word ‘cool’, its meaning is somewhat eclipsed by the unusual juxtaposition with the letter ‘S’ and the presence of the apostrophe. The contested sign as a whole does not have any clear meaning for the public in the relevant language area, yet its element ‘i-' is weak for some of the goods, as explained above.

It follows that the signs bring to mind different meanings and, therefore, they are not conceptually similar. Nevertheless, account must be taken of the limited impact of the concept conveyed by the earlier marks and the weak distinctiveness of the concept present in the contested sign, for some of the goods.

Visually, the signs coincide in that they contain the sequence of the letters ‘S*COOL’, although separated by the apostrophe in the earlier marks and appearing as a single word in the contested sign. Notwithstanding the fact that the signs differ in the apostrophe of the earlier marks and the hyphen of the contested sign, they share the same graphical structure, insofar as their first letters are separated from the rest of the letters by some sort of punctuation mark. The contested sign differs in the additional letter ‘i', which is weak for some of the goods at issue.

Aurally, the pronunciations of the signs coincide in the sound of the letters ‛SCOOL’, present identically in both signs, because the apostrophe in the earlier marks will not have an audible impact and the sign will be pronounced as a single word. The contested sign differs in that it contains the additional sound corresponding to the letter ‘i', which is likely to be pronounced as in English and which is weak for some of the goods at issue.

Therefore, and depending on the distinctiveness of the differentiating letter ‘i' of the contested sign, the degree of visual and aural similarity between the signs varies from above average to very high.

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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no clear meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of the laudatory word ‘cool’, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Some of the contested goods are identical or similar to varying degrees to those of the earlier marks. As regards the goods that have been found similar to a low degree, it has to be borne in mind that 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 services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

For a part of the relevant goods, the public’s degree of attention will not be enhanced. Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). That, coupled with the strong similarity between the signs on visual and aural levels resulting from the common letter sequence ‘S*COOL’ and based on the average degree of inherent distinctiveness of the earlier marks, can lead to a situation where the average consumer, whether the public at large or professionals, overlook the differences between the signs and think that the identical or similar goods, including those that are similar to a low degree, are designated by a variation of the same trade mark. It is common practice, on the relevant market sectors, to use different configurations of trade marks, by adding verbal (or figurative) elements to them, in order to denote a product line or endow the trade mark with a new, fashionable image.

Although the relevant public’s degree of attention will be high in relation to various types of vehicles in Class 12, it has to be kept in mind that these contested goods are identical to the opponent’s goods and for them the visual and aural similarities between the signs are overwhelming, on account of the limited impact of the differentiating element, ‘i-’, of the contested sign. 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s international trade mark registration No 1 066 502 designating the European Union, and German trade mark registration No 30 454 782. As regards the opponent’s international trade mark registration designating the European Union, 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. Therefore, it is not necessary to analyse the remaining part of the public.

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

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Natascha GALPERIN

Solveiga BIEZA

Julie GOUTARD

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.