ADRENALINE | Decision 2722927
Date Published: Sep 25, 2017
OPPOSITION No B 2 722 927
Andee Widjaja, Raya Bambe Km 20, Desa Bambe, Driyorejo - Gresik, Surabaya - East Java 61177, Indonesia (opponent), represented by A2 Estudio Legal, Calle Hermosilla, 59 Bajo izquierda, 28001 Madrid, Spain (professional representative)
a g a i n s t
Inter Cars S.A., Powsińska 64, 02-903 Warszawa, Poland (applicant), represented by Kancelaria Prawno-Patentowa Ryszard Skubisz, ul. Piastowska 31, 20-610 Lublin, Poland (professional representative).
On 11/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 722 927 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 035 355. The opposition is based on European trade mark registration No 12 640 249. The opponent invoked Article 8(1)(b) EUTMR.
Earlier trade mark | Contested sign |
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 goods
The goods on which the opposition is based are the following:
Class 12 Bicycles.
The contested goods are the following:
Class 9 Protective goggles and sunglasses; motorcycle goggles; protective helmets for motor cyclists; articles of protective clothing for wear by motorcyclists for protection against accident or injury; shields for protecting the body against injury; safety restraints, other than for vehicle seats and sports equipment.
Class 12 Anti-theft alarms for motorcycles and scooters; anti-theft apparatus for motorcycles and scooters (vehicles); safety belts for motorcycles; luggage carriers for motorcycles.
Class 18 Travelling sets for motorcyclists; trunks and suitcases; waterproof bags; saddlebags; leather straps; tool bags for motorcycles.
Class 25 Motorcyclists' clothing of leather; footwear and headgear for motorcyclists; outerwear for motorcyclists; protective clothing for motorcyclists; coats, gloves, boots for motorcycling; waterproof suits for motorcyclists; chaps (clothing); overalls; protective weatherproof clothing; thermally insulated clothing; thermal underwear; thermal socks; thermal headgear; balaclavas.
Class 28 Knee pads; protective paddings for motorcyclists; gloves; protective masks for motorcyclists.
As a preliminary remark, it is to be noted that 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 9
The contested protective goggles and sunglasses; motorcycle goggles; protective helmets for motor cyclists; articles of protective clothing for wear by motorcyclists for protection against accident or injury; shields for protecting the body against injury; safety restraints, other than for vehicle seats and sports equipment are dissimilar to the opponent´s bicycles. The fact that part of the goods could theoretically also be used by cyclists (e.g. protective goggles and sunglasses) is not sufficient to find similarity, as all the contested goods still differ in their nature, method of use, producer and distribution channels from the goods of the earlier mark; furthermore they are neither complementary nor in competition with each other.
Contested goods in Class 12
The contested anti-theft alarms for motorcycles and scooters; anti-theft apparatus for motorcycles and scooters (vehicles); safety belts for motorcycles; luggage carriers for motorcycles are dissimilar to the opponent´s bicycles. The goods of the earlier mark are anti-theft devices and luggage carriers, exclusively for motorcycles. They differ in their nature, method of use, producer, relevant public and distribution channels from the goods of the earlier mark. They are neither complementary nor in competition with each other.
Contested goods in Class 18
The contested travelling sets for motorcyclists; trunks and suitcases; waterproof bags; saddlebags; leather straps; tool bags for motorcycles are dissimilar to the opponent´s bicycles. The fact that part of the goods could theoretically also be used by cyclists (e.g. waterproof bags; saddlebags; leather straps) is not sufficient to find similarity, as all the contested goods still differ in their nature, method of use, producer and distribution channels from the goods of the earlier mark; furthermore, they are neither complementary nor in competition with each other.
Contested goods in Class 25
The contested motorcyclists' clothing of leather; footwear and headgear for motorcyclists; outerwear for motorcyclists; protective clothing for motorcyclists; coats, gloves, boots for motorcycling; waterproof suits for motorcyclists; chaps (clothing); overalls; protective weatherproof clothing; thermally insulated clothing; thermal underwear; thermal socks; thermal headgear; balaclavas are dissimilar to the opponent´s bicycles. The fact that part of the goods could theoretically also be used by cyclists (e.g. chaps (clothing); overalls; protective weatherproof clothing; thermally insulated clothing; thermal underwear; thermal socks; thermal headgear; balaclavas) is not sufficient to find similarity, as all the contested goods still differ in their nature, method of use, producer and distribution channels from the goods of the earlier mark; furthermore, they are neither complementary nor in competition with each other.
Contested goods in Class 28
The contested knee pads; protective paddings for motorcyclists; gloves; protective masks for motorcyclists are dissimilar to the opponent´s bicycles. The fact that part of the goods could theoretically also be used by cyclists (e.g. knee pads; gloves) is not sufficient to find similarity, as all the contested goods still differ in their nature, method of use, producer and distribution channels from the goods of the earlier mark; furthermore, they are neither complementary nor in competition with each other.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Peter QUAY | Tobias KLEE | Sigrid DICKMANNS |
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.