PIT-STORE RACING MERCHANDISING | Decision 719/2016-4

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DECISION

of the Fourth Board of Appeal

of 10 January 2017

In Case R 719/2016-4

PV Automotive GmbH

Theodor-Heuss-Str. 44

47167 Duisburg

Germany

Opponent / Appellant

represented by WEBER & SAUBERSCHWARZ, Königsallee 62, 40212 Düsseldorf, Germany

v

A.R.P. ADVANCED RETAIL PROJECT SPA

Viale Parioli 87

00197 Roma

Italy

Applicant / Respondent

represented by STUDIO FERRARIO S.R.L., Via Collina, 36, 00187 Roma, Italy

APPEAL relating to Opposition Proceedings No B 2 484 825 (European Union trade mark application No 13 448 841)

THE FOURTH BOARD OF APPEAL

composed of D. Schennen (Chairperson), C. Bartos (Rapporteur) and E. Fink (Member)

Registrar: H. Dijkema

gives the following


Decision

Summary of the facts

  1. By an application filed on 11 November 2014, the respondent sought to register

 

for various goods and services in Classes 9, 25, 28 and 35. The following list of goods and services is relevant for the current proceedings:

Class 9 − Magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; fire-extinguishing apparatus; altimeters; speed checking apparatus for vehicles; precision measuring apparatus; vehicles (navigation apparatus for -) [on-board computers]; satellite navigational apparatus; remote control apparatus; optical apparatus and instruments; cameras; Global Positioning System [GPS] apparatus; distance recording apparatus; distance measuring apparatus; radios; radar apparatus; car radios; telephones; computer software applications, downloadable; opticians' goods; sound alarms; compasses [measuring instruments]; magnets (decorative -); calculators; pocket calculators; shoes for protection against accidents, irradiation and fire; socks, electrically heated; battery chargers; head protection; protective helmets for sports; portable computers; steering apparatus, automatic, for vehicles; protection devices for personal use against accidents; life saving apparatus and equipment; temperature indicating apparatus; petrol level gauges; speed indicators; hands free kits for phones; optical lenses; lenses for eyeglasses; DVD players; frames for glasses; tablet computers; scientific apparatus and instruments; data processing equipment; magnetic data carries; apparatus and instruments for surveying; photographic apparatus and instruments; optical apparatus and instruments; measuring apparatus and instruments; signalling apparatus and instruments; apparatus and instruments for checking (supervision); life-saving apparatus and instruments; apparatus and instruments for teaching;

Class 25 − Clothing; footwear; headgear; motorists' clothing; cyclists' clothing; clothing for gymnastics; gymnastic shoes; sports shoes; ski boots;

Class 35 − Advertising; business management; retail services connected with the sale of clothing and clothing accessories; retailing in relation to stationery and office requisites; retailing in relation to beauty preparations, toiletries, optical goods, jewellery, horological and chronometric instruments, banknote clips, wallets, purses, games, toys, ride-on toys, models and radio-controlled models, helmets, flags, badges, pins, magnets, mugs, household containers, rugs, cases for telephones, tablets and laptop computers, parts for vehicles (memorabilia).

  1. On 2 March 2015, the appellant filed an opposition against part of the goods and services for which the EUTM applied for seeks protection, namely those mentioned in para. 1 above, based on Article 8(1)(b) EUTMR and its earlier German trade mark No 30 2011 011 276

pit-stop

registered on 24 May 2011 for various goods and services. The opposition was based only on the following goods and services:

Class 9 − Surveying apparatus, measuring, signalling and checking (supervision) apparatus; fire extinguishing apparatus for motor vehicles; batteries, electric; chargers for electric batteries; acidimeters for batteries; car aerials; speed, temperature and water level indicators; electronic and entertainment apparatus for vehicles, in particular car radios, CD-players; cassettes recorders and players and television sets for vehicles; barometers; petrol gauges; radio navigation apparatus; anti-glare screens; anti-glare glasses, time recording devices; detectors; electric anti-theft alarm systems for motor vehicles, electric immobilisers; revolution counters, pressure measuring apparatus; milage recorders for vehicles; thermostats for vehicles, vehicle brakedown warning triangles; radio telephone apparatus for vehicles, electric lines and sleeves therefor; electric locks; signal lanterns; steering apparatus, automatic for vehicles; taximeters; parts of the aforesaid goods (included in Class 9); electronic data carriers containing recorded data for providing technical information and product information on motor vehicle parts and workshop equipment to users of these parts and equipment, in particular to operators of motor vehicle workshops and motor vehicle parts dealers; powerfuel and fuel pumps for gas stations; fuel gauges;

Class 25 − Clothing, footwear and headgears;

Class 35 − Consultancy services in the field of business management; whole sale and retail services, also on the internet and via mail-order business as well as by means of teleshopping with chemical products, painting products, chemist’s goods, cosmetic products and budget goods, goods on the health sector, fuels, engines, tools and metal hardware, construction articles, do-it-yourself-articles, garden articles, amateur need products, garden articles, electric goods and electronic goods, sound storage mediums and data mediums, sanitary arrangements, vehicles and vehicle accessories and vehicle parts, fireworks, watches (clocks) and jewellery, music instruments, printing office products, stationary, writing materials, articles of stationary, leather wear and upholster’s goods, equipment and decoration goods, tents, planning, clothing articles, shoes and textile goods, toys, sports articles, food and beverages (also alcoholic beverages), agricultural products, garden-economic products and forest-economic products, tobacco products and other luxuries; providing information in trade and business matters; support in management of commercial business; online-advertisement on a computer network; presentation of firms in the internet and other media; presentation of goods in communication-media for retail services; renting of advertising spaces in the internet; demonstration of goods for advertising purposes; advertising in the internet for third persons; services of an advertising agency; marketing and merchandising (sales promotion); organizational and business consultancy services for franchising-concepts; management consultancy and personnel management consultancy; organization of fairs for advertising purposes.

  1. Together with the notice of opposition, the appellant submitted an extract of the database of the Deutsche Patent- und Markenamt (‘German Patent and Trade Mark Office’, ‘DPMA’). This extract was in English, with the exception of the list of goods and services, which was in German. A translation of the list of goods and services into the language of proceedings was attached.
  2. After being invited by the Opposition Division, the appellant filed its statement of opposition. The respondent did not file any observations.
  3. By decision of 22 February 2016 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety, since the appellant failed to substantiate its earlier trade mark. It held that the document submitted was of unknown origin.
  4. The appellant filed a notice of appeal, followed by a statement of grounds. It requests to annul the contested decision and to reject the EUTM applied for.
  5. It argues, that it cannot be said that the document submitted is of an ‘unknown origin’. Together with the statement of grounds, the appellant submitted extracts of the database of the DPMA, which includes the indication ‘Deutsche Patent- und Markenamt’ in the header.
  6. The respondent did not file any observations.

Reasons

  1. The appeal is admissible and successful. The appellant already submitted sufficient evidence concerning the substantiation of its earlier trade mark before the Opposition Division. Furthermore, there exists likelihood of confusion since the goods and services are partly identical and partly similar and the signs are also similar.

Substantiation of the earlier right

  1. The opposition is based on a German trade mark. Within the period provided in Rule 19(1) CTMIR and in accordance with Rule 19(2)(a)(ii) and (3) CTMIR, the appellant proved the existence, validity and scope of protection of these earlier rights, as well as its entitlement to file the opposition, by providing the Office with extracts showing all the formal and substantive particulars of the trade mark emanating from the administration by which the trade marks were registered, i.e. extracts from the database maintained by the DPMA, and a translation thereof in the language of the proceedings.
  2. The mere fact that these extracts did not include a reference to the DPMA database in the header does not render this evidence insufficient. From the specific lay-out and format of the extracts, known by both, the Opposition Division and the Board, there can be no doubt that this extract emanated from the relevant administration. Furthermore, it is a well-known fact that the DPMA provides users also with print-outs in English. The fact that no official header appears on the print-out does not allow the conclusion that the evidence ‘is of unknown origin’, as argued by the Opposition Division.
  3. From the above it follows that the earlier trade mark was substantiated within the relevant period and there is no need to deal with the question whether the evidence submitted during the appeal proceedings should be taken into consideration.

Article 8(1)(b) EUTMR

  1. Pursuant to Article 8(1)(b) EUTMR, a European Union trade mark application shall be rejected upon opposition where there is an earlier trade mark as referred to in Article 8(2) EUTMR and if because of the identity with or similarity of the signs and the identity or similarity of the goods or services there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; a likelihood of confusion including a likelihood of association with the earlier trade mark.
  2. 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17-26). It should, however, be recalled that the average consumer’s level of attention is likely to vary according to the category of goods or services in question and that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his/her trust in the imperfect picture of them that he/she has kept in his/her mind (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
  3. The goods and services at issue are directed at end consumers at large (most goods and services in Classes 9 and 25 and retail services in Class 35) and at professional consumers (most services in Class 35). Their awareness level ranges from average to high.
  4. Since the earlier trade mark is protected in Germany, the relevant territory is Germany.

Comparison of goods and services

  1. Both trade marks contain ‘fire extinguishing apparatus, clothing; footwear; headgear’ in their respective lists.
  2. Despite some small differences in the wording, both lists contain ‘apparatus and instruments for surveying’, ‘measuring apparatus and instruments’, ‘signalling apparatus and instruments’, ‘apparatus and instruments for checking (supervision)’, ‘chargers for batteries’, ‘temperature indicating apparatus’, ‘advertising’, ‘business management’ and ‘retail services connected with the sale of clothing and clothing accessories; retailing in relation to stationery and office requisites; retailing in relation to beauty preparations, toiletries, optical goods, jewellery, horological and chronometric instruments, banknote clips, wallets, purses, games, toys, ride-on toys, models and radio-controlled models, helmets, flags, badges, pins, magnets, mugs, household containers, rugs, cases for telephones, tablets and laptop computers, parts for vehicles’.
  3. The applied for ‘speed checking apparatus for vehicles; steering apparatus, automatic, for vehicles; protection devices for personal use against accidents; precision measuring apparatus; distance measuring apparatus; speed indicators; altimeters; radar apparatus; compasses [measuring instruments];’ fall within the general term ‘apparatus and instruments for checking (supervision)’, for which the EUTM applied for seeks protection. These goods are therefore identical to the earlier ‘checking (supervision) apparatus’.
  4. The applied for ‘DVD players; radios; car radios’ are specific apparatus for entertainment and are therefore identical to ‘electronic and entertainment apparatus for vehicles, in particular car radios, CD-players; cassettes recorders and players and television sets for vehicles’, for which the earlier trade mark enjoys protection.
  5. The applied for ‘signalling apparatus and instruments’ also include the applied for ‘sound alarms’ and are therefore identical to ‘signalling apparatus’, for which the earlier trade mark enjoys protection.
  6. ‘Petrol level gauges’, for which the trade mark applied for seeks protection, are identical to the earlier ‘fuel gauges’.
  7. The applied for ‘telecommunication equipment’ also encompasses the applied for ‘telephones’, which are identical to the earlier ‘radio telephone apparatus for vehicles’.
  8. The applied for ‘optical apparatus and instruments’ also include the earlier ‘anti-glare screens; anti-glare glasses,’ and are therefore identical.
  9. The applied for ‘motorists’ clothing; cyclists’ clothing; clothing for gymnastics; gymnastic shoes; sports shoes; ski boots’ are specific types of ‘clothing’ and ‘footwear’ included in both trade marks. These goods are therefore identical.
  10. In order for the similarity of the goods or services at issue to be assessed, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose, their method of use, their end-users and whether they are in competition with each other or are complementary (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 37). The reference point is whether the relevant public would perceive the relevant products as having a common commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38).
  11. The applied for ‘vehicles (navigation apparatus for -) [on-board computers]; satellite navigational apparatus; Global Positioning System [GPS] apparatus; distance recording apparatus’ have the purpose to localize a vehicle and to help the driver to reach his/her destination. The same holds true for the earlier ‘radio navigation apparatus’; consequently, these goods are highly similar.
  12. The applied for ‘computer software applications, downloadable’ are similar to the earlier ‘electronic data carriers containing recorded data for providing technical information and product information on motor vehicle parts and workshop equipment to users of these parts and equipment, in particular to operators of motor vehicle workshops and motor vehicle parts dealers’ includes ‘software’. The only difference between the goods is the fact that the goods applied for are to be downloaded while the earlier goods are stored on a readable support medium.
  13. The applied for ‘life-saving apparatus and instruments’ are similar to the earlier ‘signal lanterns’ and ‘signalling apparatus’. While ‘signal lanterns’, primarily, serve to indicate one’s location, they are, in many circumstances, also a life-saving apparatus since one’s location has to be known in order to be rescued.
  14. The applied for ‘hands free kits for phones’ are accessories for telephones. They allow people, i.a., to use a mobile phone while driving. The earlier ‘radio telephone apparatus for vehicles’ serve the same purpose. Therefore, these goods are similar.
  15. ‘Opticians’ goods; optical lenses; lenses for eyeglasses; frames for glasses’ are all goods which are addressed at the general consumer and which help to improve one’s eyesight. The same holds true for the earlier ‘anti-glare screens; anti-glare glasses’, even if their main purpose is to protect the eyesight. Hence, similarity exists.
  16. Pursuant to Article 28(7) EUTMR, in force since 23 March 2016, which is identical to Rule 2(4) CTMIR, which was in force until 22 March 2016, goods and services shall not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification.
  17. Consequently, the applied for ‘shoes for protection against accidents, irradiation and fire; head protection; protective helmets for sports; socks, electrically heated’ must be considered similar to the earlier ‘clothing; headwear’ in Class 25. The only difference between these goods is the fact that the contested goods provide a better protection against accidents.
  18. Goods and services are not complementary merely because they may be used on an occasion where the other goods or services are also used; complementarity of goods and services requires a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods or for the provision of those services lies with the same undertaking (07/02/2006, T202/03, Comp USA, EU:T:2006:44, § 46).
  19. The applied for ‘remote control apparatus’ are either an important accessory to ‘measuring, signalling and checking (supervision) apparatus’, for which the earlier trade mark is protected. These goods are therefore complementary and therefore similar.
  20. The Board further notes that, according to case-law, there is a similarity to an average degree between goods and the retail or wholesale services which relate to the same goods, mainly on account of their complementary character (see, for example, 05/07/2012, T-466/09, Mc.Baby, EU:T:2012:346, § 24) and highly similar goods (09/07/2015, T-89/11, NANU / NAMMU, EU:T:2015:479).
  21. The applied for ‘tablet computers; portable computers; data processing equipment; calculators; pocket calculators; cameras; photographic apparatus and instruments’ are all either electric or electronic goods; electronic goods are any goods ‘having or operating with components such as microchips and transistors that control and direct electric currents’ (https://en.oxforddictionaries.com/definition/electronic, 27/10/2016). These applied for goods are therefore similar to the earlier ‘whole sale and retail services […] with […] electric goods and electronic goods’.
  22. The applied for ‘magnetic data carriers, recording discs; magnetic data carries, compact discs, DVDs and other digital recording media’ are all specific data storage devices and are therefore similar to the earlier ‘whole sale and retail services, […] with […] sound storage mediums and data mediums’.
  23. The applied for ‘magnets (decorative-]’ are only decorative objects and are therefore similar to the earlier ‘whole sale and retail services, […] with […] decoration goods’.
  24. Consequently, all the goods and services are either identical or similar.

Comparison of the signs

  1. The comparison in relation to the visual, aural and conceptual similarity of the signs in question has to take into account the overall impression given by them, bearing in mind, in particular, their distinctive and dominant components (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28).
  2. The earlier trade mark enjoys protection for the word ‘pit-stop’.

Earlier sign

  1. The EUTM applied for seeks protection for a figurative sign, consisting of the term ‘PIT-STORE’ in standard white italic letters, printed in a black  rectangular box, in which a horizontal red line appears. Below the above mentioned verbal element something else is written; however, this cannot be identified and must for this reason be neglected. The sign is dominated by the verbal element ‘pit-store’; the graphic features play only a minor role.
  2. The earlier sign consist of an English expression ‘pit-stop’, which will most probably be understood by the relevant German consumer as ‘a brief stop made at a pit by a racing car for repairs’, or ‘any stop made during a car journey for refreshment, rest, or refuelling’ (http://www.collinsdictionary.com/dictionary/english/pit-stop, 27/10/2016). The sign applied for has, neither in English nor in German, any meaning, but refers also to ‘pit’. Consequently, irrelevant whether either sign has a clear meaning for the relevant German consumer, both signs refer to ‘pit’ and therefore to an identical concept with respect to this element. Even if ‘store’ and ‘stop’ have different concepts, the signs are still conceptually similar.
  3. All the terms are part of the English language and will be understood by the German consumer.
  4. The signs are visually similar at least to a below average degree due to the common beginning. The difference arising from the different endings, i.e. the last letter(s), and the additional graphic features of the sign applied for cannot outweigh the similarities.
  5. While the relevant territory is Germany, the signs will still be pronounced in accordance with the English language rules. Aurally, both signs will be pronounced in a similar way as [pɪt stɒp] and [pɪt stɔː], and they are therefore aurally at least similar to an average degree. In the case of a German consumer not being able to distinguish between the different possible pronunciations of the vowel ‘o’, the similarity is even higher.

Overall assessment of the likelihood of confusion

  1. A likelihood of confusion on the part of the public must be assessed globally, and that global assessment implies some interdependence between the factors taken into account and in particular similarity between the signs and the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the signs, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
  2. The more distinctive the earlier trade mark, the greater the risk of confusion, and trade marks with a highly distinctive character, either per se or because of the reputation 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).
  3. The appellant did not claim an enhanced distinctiveness of the earlier trade mark, which therefore must be assessed in accordance with its intrinsic distinctive character, which is average.
  4. The goods and services are in part identical and in part similar. The signs are similar to an average degree. Consequently, even taking into account that for part of the goods and services the attention of the relevant consumer will be higher than normal, a likelihood of confusion exists.

Result

  1. The appeal is allowed, the contested decision annulled and the EUTM applied for rejected for all contested goods and services mentioned at para. 1.

Costs

  1. The respondent is the losing party and shall be ordered to bear the costs incurred by the appellant in the opposition and the appeal proceedings, pursuant to Article 85(1) EUTMR.

Fixing of costs

  1. In accordance with Article 85(6) EUTMR and Rule 94(7)(d)(i) and (v) CTMIR, the Board fixes the amount of representation costs to be paid by the respondent to the appellant with respect to the appeal proceedings at EUR 550 and for the appellant’s representation in the opposition proceedings at EUR 300. In addition the respondent has to reimburse to the appellant the opposition fee of EUR 350 and the appeal fee of EUR 720 according to Rule 94(6) CTMIR. The total amount is EUR 1 920.

Order

On those grounds,

THE BOARD

hereby:

  1. Annuls the contested decision;
  2. Rejects the contested EU trade mark application for the following goods and services:

Class 9 ‒ Magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; fire-extinguishing apparatus; altimeters; speed checking apparatus for vehicles; precision measuring apparatus; vehicles (navigation apparatus for -) [on-board computers]; satellite navigational apparatus; remote control apparatus; optical apparatus and instruments; cameras; Global Positioning System [GPS] apparatus; distance recording apparatus; distance measuring apparatus; radios; radar apparatus; car radios; telephones; computer software applications, downloadable; opticians' goods; sound alarms; compasses [measuring instruments]; magnets (decorative -); calculators; pocket calculators; shoes for protection against accidents, irradiation and fire; socks, electrically heated; battery chargers; head protection; protective helmets for sports; portable computers; steering apparatus, automatic, for vehicles; protection devices for personal use against accidents; life saving apparatus and equipment; temperature indicating apparatus; petrol level gauges; speed indicators; hands free kits for phones; optical lenses; lenses for eyeglasses; DVD players; frames for glasses; tablet computers; scientific apparatus and instruments; data processing equipment; magnetic data carries; apparatus and instruments for surveying; photographic apparatus and instruments; optical apparatus and instruments; measuring apparatus and instruments; signalling apparatus and instruments; apparatus and instruments for checking (supervision); life-saving apparatus and instruments; apparatus and instruments for teaching;

Class 25 ‒ Clothing; footwear; headgear; motorists' clothing; cyclists' clothing; clothing for gymnastics; gymnastic shoes; sports shoes; ski boots;

Class 35 ‒ Advertising; business management; retail services connected with the sale of clothing and clothing accessories; retailing in relation to stationery and office requisites; retailing in relation to beauty preparations, toiletries, optical goods, jewellery, horological and chronometric instruments, banknote clips, wallets, purses, games, toys, ride-on toys, models and radio-controlled models, helmets, flags, badges, pins, magnets, mugs, household containers, rugs, cases for telephones, tablets and laptop computers, parts for vehicles (memorabilia);

  1. Orders the respondent to bear the fees and costs of the opposition and the appeal proceedings;

  1. Fixes the amount of fees and costs to be paid by the respondent to the appellant at EUR 1 920.

Signed

D. Schennen

Signed

C. Bartos

Signed

E. Fink

Registrar:

Signed

H. Dijkema

10/01/2017, R 719/2016-4, PIT-STORE (fig.) / PIT STOP

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