OPPOSITION DIVISION
OPPOSITION No B 2 761 230
Maserati S.p.A., Via Ciro Menotti, 322, 41100 Modena, Italy (opponent), represented
by Jacobacci & Partners S.p.A., Corso Emilia 8, 10152 Torino, Italy (professional
representative)
a g a i n s t
Caberg S.p.A., Via Emilia 11, 24052 Azzano, San Paolo (Bergamo), Italy (applicant),
represented by Dott. Franco Cicogna & C.Srl, Via Visconti di Modrone 14/A, 20122
Milano, Italy (professional representative).
On 10/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 761 230 is upheld for all the contested goods.
2. European Union trade mark application No 15 451 263 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
Preliminary remark
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 451 263 for the word mark ‘LEVANTE’ namely against all the
goods in Class 9. The opposition is based on Italian trade mark registration
No 1 474 528 for the figurative mark and international trade mark
registration No 1 117 222 for the figurative mark designating the EU.
The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE REQUEST
The Opposition Division takes note of the fact that applicant’s observations of
21/03/2017 were entitled “Brief of opposition with request of proof of use”. However,
in subsequent parts of its observations the applicant did not repeat or elaborate on
the proof of use request. Regardless of whether or not this request was sufficiently
explicit and unambiguous, the Opposition Division finds that it would be inadmissible
because it does not comply with the requirements of Article 47(2) and (3) EUTMR.
Decision on Opposition No B 2 761 230 page: 2 of 7
In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the
opponent must furnish proof that, during the five-year period preceding the date of
filing or, where applicable, the date of priority of the contested trade mark, the earlier
trade mark has been put to genuine use in the territories in which it is protected in
connection with the goods or services for which it is registered and which the
opponent cites as justification for its opposition, or that there are proper reasons for
non-use. The earlier mark is subject to the obligation of use if, at that date, it has
been registered for at least five years.
In the present case the contested trade mark was applied for on 18/05/2016.
Therefore the earlier trade marks should have been registered for at least five years
at that date for the proof of use request to be admissible.
Earlier Italian trade mark registration No 1 474 528 was registered on 19/01/2012,
thus it had not been registered for five years at the date of application of the
contested trade mark.
Earlier trade mark No 1 117 222 is an international registration designating the EU.
Article 203 EUTMR provides that for the purposes of applying Article 47(2) EUTMR,
the date of publication pursuant to Article 190(2) EUTMR will take the place of the
date of registration for the purpose of establishing the date as from which the mark
that is the subject of an international registration designating the EU must be put to
genuine use in the Union. The date of publication pursuant to Article 190(2) EUTMR
for the earlier trade mark at issue is 23/04/2013, thus also this earlier trade mark had
not been registered for five years at the date of application of the contested trade
mark.
As neither of the earlier trade marks had been registered for at least five years at the
date of filing of the contested trade mark, the request for proof of use would, in any
case, be inadmissible.
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.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s Italian trade mark registration No 1 474 528 for the figurative mark
.
a) The goods
The goods on which the opposition is based are the following:
Class 12: Vehicles; apparatus for locomotion by land, air or water.
Decision on Opposition No B 2 761 230 page: 3 of 7
The contested goods are the following:
Class 9: Helmets for motorcyclists; protective helmets for motor cyclists; safety
helmets.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from 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 9
The contested helmets for motorcyclists; protective helmets for motor cyclists in
Class 9 are protective head coverings made of material, such as leather, metal, or
plastic, specially designed for use by motorcyclists. The contested safety helmets is
a broader category of protective head coverings including, inter alia, helmets
designated for motorcycles or racing helmets. The opponent’s vehicles in Class 12
refer to a broad category covering any means of conveyance provided with wheels or
runners and used for the carriage of persons or goods, such as cars or motorcycles.
These goods are similar as they belong to the same sector of products and are
complementary to each other or, at the very least, used in combination with each
other. Many European jurisdictions require mandatory use of helmets while driving
motorcycles. Additionally, the goods in comparison are mostly distributed through the
same distribution channels and specialized outlets and the relevant public is also the
same.
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 found to be similar are directed at the public at large,
but also the specialized public (e.g. specialized types of safety helmets). The level of
attention of the relevant public may vary from average to high, depending on the
price, specialised nature, or terms and conditions of the purchased goods.
Also, taking into consideration the price of vehicles, such as cars or motorbikes,
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).
Likewise, consumers tend to pay more attention when choosing goods that may
influence their safety, like in the case of the contested helmets for motorcyclists;
protective helmets for motor cyclists; safety helmets.
Decision on Opposition No B 2 761 230 page: 4 of 7
c) The signs
LEVANTE
Earlier trade mark Contested sign
The relevant territory is Italy.
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 verbal element ‘LEVANTE’ which coincides in both trade marks may be
understood by the relevant public as a noun meaning ‘east’ or an adjective meaning
‘rising’, which is masculine and feminine plural form of the word ‘LEVANTI’ (see
Wiktionary at https://en.wiktionary.org/wiki/levante#Italian). This word may also refer
to certain geographical locations, namely a) eastern region of the Iberian Peninsula,
on the Spanish Mediterranean coast, b) a province in Majorca, Spain or c) Riviera di
Levante (or ‘the coast of the rising sun’) which is Italian name for the Italian Riviera
(see Wikipedia at https://en.wikipedia.org/wiki/Levante). However, none of these
geographical locations can be considered known for the category of goods
concerned and it is not reasonable to assume that it will be associated with those
goods or services in the future (judgment of 04/05/1999, C-108/97 and C-109/97,
Chiemsee, EU:C:1999:230, § 31) or that such a name may, in the mind of the
relevant public, designate the geographical origin of that category of goods or
services (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 51; T-379/03,
Cloppenburg, EU:T:2005:373, § 38). All in all, since the word ‘LEVANTE’ is not
descriptive for any of the relevant goods, it is considered distinctive.
The earlier sign is a figurative one composed solely of the distinctive verbal element
‘LEVANTE’ written in a stylised way in bold font and italics. All of the letters except
the letter “N” are joined together by a long line at the bottom.
Visually, the signs coincide in the element ‘LEVANTE’, which constitutes the entire
contested mark and the only word element of the earlier trade mark. They differ in the
graphic depiction of the element ‘LEVANTE’ of the earlier sign which is merely
decorative. Consequently, the signs are visually similar to a high degree.
Aurally, both signs will be pronounced identically in three syllables as /le-van-te/.
Therefore, the signs are aurally identical.
Conceptually, the word ‘LEVANTE’, which both signs have in common, has
a meaning in Italian. Reference is made to the previous assertions concerning the
semantic content conveyed by the marks. As both signs will be perceived by the
relevant public as a reference to this meaning, they are conceptually identical.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 2 761 230 page: 5 of 7
d) 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, 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.
e) 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. 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).
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).
The goods under comparison are similar. The signs are visually similar to a high
degree, and aurally and conceptually identical. The earlier mark has a normal degree
of distinctiveness for the relevant public.
The degree of attention of the relevant public may vary from average to high.
The earlier mark’s only verbal element is reproduced in its entirety in the contested
sign. This coinciding element does not have any meaning in relation to the goods at
hand in the relevant territory and has normal level of distinctiveness. The depiction of
this verbal element in the earlier sign is merely decorative.
Taking into account the interdependence principle mentioned above, and 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), which applies likewise to the
consumers who pay a high degree of attention (21/11/2013, T-443/12, ancotel,
EU:T:2013:605, § 54), the Opposition Division considers that there is a likelihood of
confusion for the relevant public, both with average and high degree of attentiveness,
for the goods considered to be similar.
The applicant argues that it was the first Italian company to introduce a flip up helmet
on the market and the second one worldwide. The business has been developing
and expanding thought the years and the applicant itself is well-known. In this
respect, the Opposition Division would like to note that right to an EUTM begins on
the date when the EUTM is filed and not before, and from that date on the EUTM has
Decision on Opposition No B 2 761 230 page: 6 of 7
to be examined with regard to opposition proceedings. Therefore, when considering
whether or not the EUTM falls under any of the relative grounds for refusal, events or
facts that happened before the filing date of the EUTM are irrelevant because the
rights of the opponent, insofar as they predate the EUTM, are earlier than the
applicant’s EUTM.
The applicant also argues that its actual business, production of helmets or smart
helmets for bikers, is very remote from the business of the opponent, namely
production of luxury cars. However, it must be recalled that the comparison of the
goods and services must be based on the wording indicated in the respective lists of
goods/services. Any actual or intended use not stipulated in the list of goods/services
is not relevant for the comparison since this comparison is part of the assessment of
likelihood of confusion in relation to the goods/services on which the opposition is
based and directed against; it is not an assessment of actual confusion or
infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).
Therefore, the opposition is well founded on the basis of the opponent’s Italian trade
mark registration No 1 474 528 for the figurative mark . It follows that
the contested trade mark must be rejected for all the contested goods under
Article 8(1)(b) EUTMR.
As the earlier Italian trade mark registration No 1 474 528 leads to the success of the
opposition and to the rejection of the contested trade mark for all the goods against
which the opposition was directed, there is no need to examine the other earlier right
invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L.,
EU:T:2004:268).
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
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
Torben Engholm
KRISTENSEN
Jakub MROZOWSKIJakub
MROZOWSKI
Lucinda CARNEY
Decision on Opposition No B 2 761 230 page: 7 of 7
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
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.