GIRO | Decision 2611518
Date Published: Oct 2, 2017
OPPOSITION No B 2 611 518
La Gazzetta Dello Sport Societa' Editrice A R.L., Piazza Santa Maria delle Grazie 1, 20123 Milano, Italy (opponent), represented by Jacobacci & Partners S.P.A., Via Senato, 8, 20121 Milano (MI), Italy (professional representative)
a g a i n s t
Bell Sports Inc., 5550 Scotts Valley Drive, Scotts Valley, California 95066-3438, United States of America (applicant), represented by Hanna Moore + Curley, Garryard House 25/26 Earlsfort Terrace, Dublin 2, Dublin D02 PX51, Ireland (professional representative).
On 03/03/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 611 518 is partially upheld, namely for the following contested goods:
Class 9: Protective helmets; Protective helmets for sports; Bicycle Helmets; Protective helmets used in all activities where protection of the head is reasonably necessary; High performance safety helmets used in all activities where protection of the head is reasonably necessary; Protective helmets for skiing, snowboarding, and bicycling.
Class 18: Bags for sports; backpacks; messenger bags; duffel bags; helmet bags; shoe bags.
Class 25: Footwear; Bicycling footwear; shoes, namely shoes for bicycling; Clothing, namely, t-shirts, shirts and exercise clothing, namely, sweat pants, sweat shirts, hooded shirts, training shirts, training shorts, caps, and sun visors; Bicycle clothing, namely, shorts, pants, padded shorts, padded bib shorts, jerseys, ride shirts, tights, cycling knickers, cycling pants, jackets, vests, cycling base layers, socks, shoe covers for use when wearing cycling shoes, arm warmers, leg warmers, knee warmers; Headwear, cycling caps, cycling hats; Gloves, namely, cycling gloves.
2. European Union trade mark application No 14 538 425 is rejected for all 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 European Union trade mark application No 14 538 425. The opposition is based on European Union trade mark registration No 14 400 279. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear.
Class 41: Organisation of sports competitions, In particular in the cycling sector.
The contested goods are the following:
Class 9: Protective helmets; Protective helmets for sports; Bicycle Helmets; Outer coating of bicycle helmets sold as components thereof; Protective helmets used in all activities where protection of the head is reasonably necessary; High performance safety helmets used in all activities where protection of the head is reasonably necessary; Protective helmets for skiing, snowboarding, and bicycling; Helmet accessories, namely sweat control devices, face shields, visors, and goggles; Retention mechanisms to improve helmet fit; Mechanisms for improving the adjustments of helmets; Protective helmets and safety and fastening mechanisms for the improvement of the fitting and the head adaptation of helmets for bicycling; Audio equipment for use in connection with helmets, namely, a device for transmitting and receiving voice, music and other sounds while wearing a helmet, namely, speakers and microphones that drop or snap into the earflaps of the helmet; Parts and fittings for the aforesaid goods; all included in class 9.
Class 18: Bags for sports; travel bags; backpacks; messenger bags; duffel bags; helmet bags; shoe bags.
Class 25: Footwear; Bicycling footwear; shoes, namely shoes for bicycling; Clothing, namely, t-shirts, shirts and exercise clothing, namely, sweat pants, sweat shirts, hooded shirts, training shirts, training shorts, caps, and sun visors; Bicycle clothing, namely, shorts, pants, padded shorts, padded bib shorts, jerseys, ride shirts, tights, cycling knickers, cycling pants, jackets, vests, cycling base layers, socks, shoe covers for use when wearing cycling shoes, arm warmers, leg warmers, knee warmers; Headwear, cycling caps, cycling hats; Gloves, namely, cycling gloves.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific services 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 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 (the ‘Canon’ criteria).
Contested goods in Class 9
The contested goods protective helmets; protective helmets for sports; bicycle helmets; protective helmets used in all activities where protection of the head is reasonably necessary; high performance safety helmets used in all activities where protection of the head is reasonably necessary; protective helmets for skiing, snowboarding, and bicycling; helmet accessories, namely sweat control devices, face shields, visors, and goggles; retention mechanisms to improve helmet fit; mechanisms for improving the adjustments of helmets; protective helmets and safety and fastening mechanisms for the improvement of the fitting and the head adaptation of helmets for bicycling are similar to a low degree compared with the opponent’s goods Headgear in Class 25 as they have the same nature. They can also coincide in end user and method of use.
The same considerations however cannot automatically be applied to the remaining contested goods in Class 9, where the connection between the latter and the opponent’s clothing, footwear and headgear is not that immanent, if at all. First of all, sports equipment for widely practiced sports, including gear and clothing is manufactured by a large number of different enterprises. Apart from the case where some economically successful companies produce a wide range of for instance swimming equipment, including suits and googles, it is rather unusual that the compared goods would stem from the same manufacturer. Although the use in combination cannot be excluded, it is rather occasional and not as strongly determined by the environment as in the example with the previously mentioned goods in Class 9. As far as the distribution channels are concerned, the goods in conflict can eventually be found in the same sports articles stores, but are in any case found in different sections. The coinciding end user is not a strong factor for finding similarity either. The fact remains that these goods have a different nature, purpose and method of use. The different purpose excludes their interchangeability, that is, they are not in competition. They are further not complementary. According to the practice of the Office protective gear in Class 9 can be found similar to a low degree to goods in Class 25 if they are of the same nature, for instance protective clothing and clothing or safety boots and footwear, which to a large extent determines also the same method of use and where the end users may coincide too as it was the case for the goods previously compared. However, this reasoning does not apply between the remaining contested goods in Class 9 and the opponent’s goods in Class 25.
For the reasons set out above, it follows that the remaining goods outer coating of bicycle helmets sold as components thereof; audio equipment for use in connection with helmets, namely, a device for transmitting and receiving voice, music and other sounds while wearing a helmet, namely, speakers and microphones that drop or snap into the earflaps of the helmet; Helmet accessories, namely sweat control devices, face shields, visors, and goggles; Retention mechanisms to improve helmet fit; Mechanisms for improving the adjustments of helmets; Protective helmets and safety and fastening mechanisms for the improvement of the fitting and the head adaptation of helmets for bicycling; parts and fittings for the aforesaid goods; all included in class 9 and parts and fittings for the aforesaid goods; all included in class 9 [Protective helmets; Protective helmets for sports; Bicycle Helmets; Protective helmets used in all activities where protection of the head is reasonably necessary; High performance safety helmets used in all activities where protection of the head is reasonably necessary; Protective helmets for skiing, snowboarding, and bicycling] do not share any of the Canon-criteria with the goods of the opponent in Classes 25 and even less with the services in Class 41. They neither share the same nature nor purpose of the goods or services, nor the distribution channels, the sales outlets, the producers, the method of use and they are also not in competition with each other or complementary to each other. These goods are considered to be dissimilar.
Contested goods in Class 18
The opponent’s clothing, headgear and footwear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.
The contested goods bags for sports; messenger bags; backpacks; duffel bags; helmet bags; shoe bags are goods that are related to articles of clothing, headgear and footwear in Class 25. This is because consumers are likely to consider the Class 18 goods as accessories that complement articles of outer clothing, headgear and even footwear as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing, headgear and footwear to directly produce and market goods as these contested goods in Class 18. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.
However, the contested travel bags are very different from that of clothing, headgear and footwear in Class 25. These bags are for carrying things when travelling and do not satisfy the same needs as clothing, headgear and footwear. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary. They serve very different purposes (storage, protection from rain/sun versus covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are considered dissimilar. Even more so, these goods are also dissimilar to the services of the opponent in Class 41.
Contested goods in Class 25
Footwear, headwear is identically contained in both lists of goods (including synonyms).
The contested bicycling footwear; shoes, namely shoes for bicycling are included in the broad category of the opponent’s footwear. Therefore, they are identical.
the contested clothing, namely, t-shirts, shirts and exercise clothing, namely, sweat pants, sweat shirts, hooded shirts, training shirts, training shorts, caps, and sun visors; bicycle clothing, namely, shorts, pants, padded shorts, padded bib shorts, jerseys, ride shirts, tights, cycling knickers, cycling pants, jackets, vests, cycling base layers, socks, shoe covers for use when wearing cycling shoes, arm warmers, leg warmers, knee warmers; gloves, namely, cycling gloves are included in the broad category of the opponent’s clothing. Therefore, they are identical.
The contested cycling caps, cycling hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.
- 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 are directed at the public at large. The degree of attention is considered to be average.
- The signs
GIRO D’ITALIA | GIRO |
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).
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-speaking part of the public.
The marks have no elements which can be considered to be more dominant than others.
The verbal element “Giro” has no meaning in Bulgarian and is inherently distinctive for the goods in question. The letter D with apostrophe is considered to be negligible as the consumer will not be able to distinguish the signs because of the single letter “D” with an apostrophe.
The element ’ITALIA’ of the contested sign is directly understandable in Bulgarian as the Bulgarian word for Italy in Latin characters is “Italija”. This verbal element will be understood as referring to the place of design/production or sale of the goods in Class 25 and is therefore considered to be non-distinctive for all the relevant goods in Class 25.
Visually, the signs coincide in ‘GIRO’. However, they differ in ’D’ as well as the non-distinctive verbal element ’ITALIA‘ in the earlier sign.
Therefore, the signs are highly visually similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛GIRO’, present identically in both signs. The pronunciation differs in the sound of the letters ‛D ITALIA’ of the earlier mark, the apostrophe will not be pronounced. The verbal element “ITALIA” is still considered non-distinctive.
Therefore, the signs are highly aurally similar.
Conceptually, since the only meaning in the signs is in the non-distinctive element “ITALIA” in the earlier sign, it has no relevance in terms of indication of commercial origin. Therefore, the conceptual comparison is neutral.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 trade mark has a reputation in Italy in connection with part of the goods and services for which it is registered, namely Organization of cycling competitions. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition 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).
The opponent submitted the following evidence:
- A book called “un secolo di passioni”, celebrating the 100 years of the Giro d’Italia bicycle race from 2009.
- The opponent claims further that it is common knowledge that the earlier mark is reputed.
According to the second sentence of Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments provided by the parties. It follows that in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market nor conduct an ex-officio investigation, but should exclusively base its findings on the information and evidence submitted by the opponent.
Exceptions to this rule apply where particular facts are so well-established that they can be considered as universally known and, thus, are also presumed to be known to the Office (e.g. the fact that a particular country has a certain number of consumers, or the fact that food products target the general public). However, whether or not a mark has passed the threshold of reputation established by the Court (26/11/1998, C-375/97, ‘General Motors’, EU:C:1999:408) is not in itself a pure question of fact, since it requires the legal evaluation of several factual indications, and, as such, the reputation of the earlier mark may not be simply assumed to be a universally known fact.
Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.
Both enhanced distinctiveness and reputation require recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).
In the present case, the evidence consists of a book which tells the story of the bike race Giro D’Italia in Italian. It is just one book, published and written by the opponent and does not support a conclusion that the earlier mark was known by a significant part of the relevant consumers for all or some of the services concerned by the filing date of the contested EUTM application.
Under these circumstances and in the absence of any independent and objective evidence that would enable the Opposition Division to draw solid conclusions about the degree of recognition of the earlier mark by the relevant public at the relevant date, the market share held by the mark, the position it occupies in the market in relation to competitors’ services, the duration, extent and geographical area of its use or the extent to which it has been promoted, it is concluded that the evidence does not show the degree of recognition of the trade mark by the relevant public. Also, as stated before, the Office does not find trade marks to be reputed because of “general known facts”. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has an enhanced level of distinctiveness.
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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
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).
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).
The goods are identical, similar (to various degrees) and dissimilar. The level of attention is average. The signs are visually and aurally highly similar due to fact that they both contain the distinctive (for the Bulgarian-speaking public) word ’GIRO‘ which constitutes the contested mark and is the distinctive verbal element in the earlier mark as the word “Italia” is non-distinctive and the letter D with apostrophe is considered to be negligible as the consumer will not be able to distinguish the signs because of the single letter “D” with an apostrophe.
Considering all the above, there is a likelihood of confusion on the part of the Bulgarian-speaking part of the public. 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 for those goods found to be identical or similar.
Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 14 400 279. It follows that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark. This also applies to the goods which were found to be only lowly similar as the signs are visually and aurally highly similar.
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.
The Opposition Division will therefore continue the examination of the opposition in relation to the remaining contested goods and in relation to the only other remaining ground of opposition, namely Article 8(5) EUTMR.
REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
- The signs must be either identical or similar.
- The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
- Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T345/08, & T357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.
- Reputation of the earlier mark
According to the opponent the earlier trade mark has a reputation in Italy in connection with part of the goods and services for which it is registered, namely organization of cycling competitions.
The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.
It is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar it is based on Article 8(5) EUTMR.
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 shall 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
Magnus ABRAMSSON | Lars HELBERT | Denitza STOYANOVA-VALCHANOVA |
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.