OPPOSITION No B 1 853 822

MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by MIP Metro Group Intellectual Property GmbH & Co. KG, Thomas Honnet, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)

a g a i n s t

Tien Hsin Industries Co., Ltd., No. 6, Wu-Gong 8th Rd., Wufeng Shiang, Taichung County  41353, Taiwan (applicant), represented by Marco Mario Locatelli, C.so Cristoforo Colombo, 10, 20144 Milan, Italy (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 853 822 is upheld for all the contested goods.

2.        European Union trade mark application No 9 660 507 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 9 660 507 of the figurative mark . The opposition is based on European Union trade mark registration No 779 116 of the figurative mark. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication 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 use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based namely European Union trade mark registration No 779 116.

In the present case the contested trade mark was published on 14/03/2011.

Earlier trade mark No 779 116 was registered on 19/07/2017. Therefore, the request for proof of use is 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.

1. The goods

The goods on which the opposition is based are the following:

Class 12: Land vehicles, except (carriages of) underground trains, and water vehicles, in particular trailers and boat trailers and automobiles, mopeds, motorcycles, bicycles, kayaks, rowing boats and sailing boats, snow ploughs, snow caterpillar tractors; wheelbarrows, wheelchairs for invalids, pushchairs, golf carts, hose carts, dinghies; parts for land vehicles, except parts for (carriages of) underground trains, in particular starters, silencers, brakes, reversing alarms, horns, gear boxes, couplings, motors and engines and driving belts, vehicle seats, steering wheels, wheels, tyres, wheel rims, tyre valves, shock absorbers, accessories for automobiles and bicycles, namely luggage and ski racks, snow chains, spoilers, head rests, safety belts, safety seats for children, dress guards for bicycles, bells and air pumps, puncture repair kits; roof boxes.

The contested goods are the following:

Class 12: Front derailleur; front derailleur; shift lever for land vehicles; gear lever for land vehicles; Bicycle and bicycle parts thereof, namely: chains, tubes and connectors for bicycle frames; head parts for frame-fork assembly; bottom bracket as a structural part for land vehicles; bicycle pedals; handle bars; bicycle wheel set consisting primarily of bicycle wheels; bicycle seat posts; bicycle crank; bicycle handle bar stem; gear wheels; chain rings.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of good, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s and opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 bicycle is included in the broad category of the opponent’s land vehicles, except (carriages of) underground trains, and water vehicles, in particular trailers and boat trailers and automobiles, mopeds, motorcycles, bicycles, kayaks, rowing boats and sailing boats, snow ploughs, snow caterpillar tractors. Therefore, they are identical.

The contested front derailleur; front derailleur; shift lever for land vehicles; gear lever for land vehicles; bicycle parts thereof, namely: chains, tubes and connectors for bicycle frames; head parts for frame-fork assembly; bottom bracket as a structural part for land vehicles; bicycle pedals; handle bars; bicycle wheel set consisting primarily of bicycle wheels; bicycle seat posts; bicycle crank; bicycle handle bar stem; gear wheels; chain rings are parts of land vehicles. Considering that a bicycle is a vehicle used on land and that the opponent’s parts for land vehicles, except parts for (carriages of) underground trains is a broad category that includes parts for all kinds of land vehicles, including bicycles, cars, busses etc. except parts for underground trains, these categories of goods overlap to the extent that the applicant’s goods are not used for underground trains. Therefore, these goods are identical.

The applicant argues that the goods are dissimilar since the opponent offers only land and water vehicles in cash & carry shops for professionals with a VAT number, while the applicant only sells bicycle components to professional bicycle race-teams, the very informed amateur-cyclists or owners of a bicycle shop. However, this argument cannot succeed. First, the opponent’s earlier mark is registered not only for land and water vehicles, but also for parts thereof. As explained above, the term land vehicle includes bicycles and, therefore, the opponent also has protection for bicycle parts. Second, in the framework of opposition proceedings the Opposition Division can only take into account the goods or services for which both marks are registered and not the goods or services for which the marks are actually used (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the actual use of the parties’ goods on the market is irrelevant.

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 are mainly directed at professionals, such as vehicle manufacturers, garages or bicycle shops, but some goods, e.g. chains, may also be bought by the general public. The degree of attention may vary from average to above average, considering that some of the goods in question represent a very modest investment for consumers whereas others are not everyday purchases and usually involve ample consideration before purchase for reasons of technical requirements or price, e.g. the bicycles.

3. The signs

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).

Conceptually, the earlier mark may be understood by the Italian and Spanish speaking part of the public as a reference to ‘meter’. However, for the majority of the European public it will be perceived as a reference to ‘subway’ or ‘underground’, as this originally French word is broadly used across the relevant territory. On the other hand, the contested sign ‘METRON’ conveys no clear concept for the vast majority of the EU-consumers except for the Finnish speaking part of the public which knows this word as the genitive singular form of the word ‘metro’. This means that the marks evoke a highly similar concept for the Finnish speaking part of the public, which will associate both marks with a ‘subway’ or ‘underground’ the only difference being that the contested sign indicates that something pertains to, or is related to the metro. For the rest of the EU public the contested mark is meaningless, and, therefore, the marks are conceptually not similar.

The applicant points out that the word ‘metro’ is weak in relation to Class 12, since it indicates the universal measure, the meter, a word which is in common use and freely usable. However, this argument cannot succeed since this would apply to any existing word and mean that no such words could be used in trade marks. In order to determine the distinctive character of a trade mark it must be assessed if the word is meaningful with respect to the opponent’s goods that are identical to the contested goods, in this case the (parts for) land vehicles, except (parts for (carriages of)) underground trains (and water vehicles). This is not the case here, since the word ‘metro’, whether understood as meter or as subway/underground is not descriptive, allusive or commonly used in relation to parts of vehicles other than underground trains. Hence, contrary to the applicant’s contention the word ‘metro’ must be considered inherently distinctive. For the same reasons also the verbal element of the contested sign must be considered distinctive insofar as it is understood by the Finnish speaking part of the public.

Visually, the verbal element ‘METRO’ of the earlier mark is entirely reproduced in the contested sign which merely contains one additional letter at the end, namely the letter ‘N’. Moreover, the marks differ in the particular design and colour of their typefaces, the earlier mark being depicted in yellow bold upper case letters and the contested sign in italicised black lower case letters. Although it must be observed that the shape of the first and last letter of the contested sign, the letter ‘M’ and ‘N’, is a bit unusual, they are clearly legible and will be perceived as such. The stylisation is  not so striking or disrupted that it will lead the consumer’s attention away from the words it seems merely to embellish, but the design of the marks will be perceived as particular graphic means of decorating the words ‘METRO’ and ‘METRON’. Therefore, considering that the consumers will pay more attention to marks’ verbal elements than their particular get-up and that the single letter difference in the marks’ verbal element is located at the least noticeable part of the signs, overall the marks must be considered visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the marks produce a highly similar rhythm and intonation both being pronounced in two syllables, namely [ME-TRO] and [ME-TRON], the first of which sound identical, and the second sound similar due to the shared letters ‘TRO’ at their beginnings. Although the marks differ in the sound of the additional last letter ‘N’ of the contested sign, this difference must be considered of minor importance, since it is located at the end and, therefore, in the least noticeable part of the sign and, moreover, consists of only one letter. Therefore, overall, the marks are highly similar.

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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 has no meaning for any of the goods in question from the perspective of the public in the relevant territory as stated above in section c) of this decision. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The risk that the relevant public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion. The existence thereof must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22), in particular the degree of similarity between the trade marks and between the goods or services covered, the distinctiveness of the earlier mark (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 19-20), and also the likelihood of association between the signs (11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (see to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528§ 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the earlier mark has an inherent normal degree of inherent distinctiveness. Furthermore, the contested goods were found identical to those of the earlier mark and are directed at a public whose level of attention may vary from average to above average. The marks in dispute have been found to be visually and aurally similar to a high degree and conceptually they are highly similar for the Finnish speaking part of the public, which will associate both marks with an underground train.

Moreover, it should be noted, 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) and even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

In light of all the foregoing considerations, and also taking into the identity of the goods and the level of visual, aural and conceptual similarity of the marks in dispute, it must be concluded that there is a strong likelihood of confusion on at least the part of the Finnish-speaking part of the public.

In this regard it must be mentioned, that a likelihood of confusion does not have to exist in all Member States and in all linguistic areas of the European Union. It is a result of the unitary character of the European Union trade mark, laid down in Article 1(2) EUTMR, that an earlier European Union trade mark has identical protection in all Member States. Earlier European Union trade marks may therefore be relied upon to challenge any subsequent application for a trade mark which would prejudice their protection, even if this is only in relation to the perception of consumers in part of the European Union. ‘A part’ of the European Union can consist of only one Member State (14/12/2006, T-81/03, T-82/03 and T-103/03, ‘Venado’, EU:T:2006:397, § 76 and 83). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Thus, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 779 116. It follows that the contested trade mark must be rejected for all the contested goods.

The applicant refers to a judgment involving the earlier mark in order to support its argument that there is no likelihood of confusion, namely that of 08/09/2011, T-525/09, METRO/METRONIA, EU:T:2011:437. However, this case has no bearing on the current proceedings. Firstly, the Office is not bound by its previous decisions, since each case has to be dealt with separately and with regard to its particularities on the basis of the EUTMR and not on the basis of the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Secondly, the previous case referred to by the applicant is not comparable with the present case, since the contested sign  is far more different from the earlier mark than the contested sign in question  considering that it contains three (NIA) instead of one more letter (N) at the end, and that the ‘O’ of the earlier mark is represented by a globe in the contested sign. As a consequence, the marks are aurally less similar, the earlier mark being pronounced in two syllables [MET-RO] and the contested in three [ME-TRO-NIA], while visually and conceptually the marks were considered not similar.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Justyna GBYL

Adriana VAN ROODEN

Catherine MEDINA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.