Jawel | Decision 2730375
Date Published: Sep 28, 2017
OPPOSITION No B 2 730 375
Halfords Limited, Icknield Street Drive Washford West, Redditch, Worcestershire B98 0DE, United Kingdom (opponent), represented by HGF Limited, 4th Floor, Merchant Exchange, 17-19 Whitworth Street West, Manchester M1 5WG, United Kingdom (professional representative)
a g a i n s t
Joachim Parbo, Tranebaervej 20F2, 8220 Brabrand, Denmark (applicant).
On 10/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 730 375 is upheld for all the contested goods.
2. European Union trade mark application No 15 299 902 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 299 902. The opposition is based on European Union trade mark registration No 8 839 111, in relation to which the opponent invoked Article 8(1)(b) EUTMR.
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 9: Articles of clothing, footwear and headgear for protection against accident or injury; protective helmets, face masks; all the aforesaid goods for use by cyclists.
Class 12: Pedal land vehicles; cycles; bicycles, tricycles; cycle cars; parts and fittings for all the aforesaid goods; baskets, panniers, bag carriers, luggage carriers, bells, covers, mudguards, pumps, saddles, direction indicators, all for use on pedal land vehicles; stands and kickstands for pedal land vehicles; cycle carriers for use on vehicles.
Class 28: Knee pads and elbow pads; all of the aforesaid goods for use by cyclists.
The contested goods are the following:
Class 12: Vehicles and conveyances; frames for bicycles, cycles; audible warning systems for cycles.
Class 25: Clothing; cyclists' clothing; hats; Tee-shirts.
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 12
The contested cycles are identically contained in both lists of goods.
The contested vehicles and conveyances include, as broader categories, the opponent’s pedal land vehicles in Class 12. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested frames for bicycles; audible warning systems for cycles are included in the broad category of the opponent’s parts and fittings for all the aforementioned goods (i.e. pedal land vehicles; cycles; bicycles, tricycles; cycle cars) in Class 12. These goods are identical.
Contested goods in Class 25
The contested cyclists' clothing is highly similar to the opponent’s articles of clothing for protection against accident or injury; all the aforesaid goods for use by cyclists in Class 9. These goods have a very similar nature and purpose. These goods have the same method of use, target the same public, have the same distribution channels and they are usually manufactured by the same kinds of undertakings.
The contested clothing; Tee-shirts are similar to a low degree to the opponent’s articles of clothing for protection against accident or injury; all the aforesaid goods for use by cyclists in Class 9. These goods have the same nature, methods of use and target the same public.
The contested hats are similar to a low degree to the opponent’s articles of headgear for protection against accident or injury; all the aforesaid goods for use by cyclists in Class 9. These goods have the same nature, methods of use and target the same public.
The applicant claims in its observations that it follows from the opponent’s webpage that it does not actually use the earlier mark for the products in Classes 9 or 28, and, furthermore, that it did not submit any evidence of such use. However, the Opposition Division notes that the comparison of goods and services must be based on the wording used in the lists of goods and/or services in question, that is, for which the trade mark is registered or for which registration is sought. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T 487/08, Kremezin, EU:T:2010:237, § 71). Consequently, and given that the applicant did not request proof of use of the opponent’s trade mark in due time, this claim must be set aside.
- 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 (to various degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise, for example in the bicycle and automobile fields. The degree of attention may vary from average to above average, depending on the price, (specialised) nature and conditions of the purchased goods. For example the goods in Class 12, such as vehicles or cycles, are infrequent purchases and their price could also be quite high. The level of attention for this kind of goods is rather above average.
- The signs
JEWEL | Jawel |
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English- and non-Dutch-speaking part of the relevant public, for which the words ‘JEWEL’ and ‘Jawel’ are meaningless. Both verbal elements of the conflicting signs are normally distinctive for the relevant goods.
Both marks are word marks. In case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether the word marks are represented in lower or upper case or a combination of those letters.
The Opposition Division does not agree with the applicant's argument, according to which the German-speaking part of the public will associate the word 'JAWEL' with the German word 'Jawohl' and the Danish- and Swedish-speaking part of the public will associate this word with the word 'Javel'. From the perception of the Opposition Division such perception is too artifical and does not reflect the real perception of the meanings of the signs' constituents on the market.
With respect to the applicant’s argument that the opponent has used the earlier mark in a different graphic representation or font from the one in the contested sign, it must be pointed out that when assessing identity or similarity, the signs have to be compared in the form in which they are registered or applied for. The actual or possible use of the marks in another form is irrelevant when comparing signs (judgment of 09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, § 38). Consequently, this argument of the applicant must be rejected.
Likelihood of confusion means a probability of confusion on the part of the relevant consumer and does not require actual confusion. As expressly confirmed by the Court: ‘ … it is not necessary to establish the existence of actual confusion, but the existence of a likelihood of confusion’ (judgment of 24/11/2005, T-346/04, Arthur et Félicie, EU:T:2005:420, § 69).
Visually, the signs coincide in the sequence of letters ‘J-*-W-E-L’. Both marks are word marks and composed of five letters. On the other hand, they differ in their second letters, namely ‘E’ of the earlier mark versus ‘a’ in the contested sign. Therefore, the signs are visually similar to a high degree.
Aurally, irrespective of the different pronunciation rules in the non-English- and non-Dutch-speaking parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /J-*-W-E-L/, present identically in both signs. Furthermore, both marks are pronounced in two syllables /JE-WEL/ versus /Ja-wel/. The pronunciation differs in the second letter /E/ of the earlier mark versus /a/ of the contested sign, which are anyway both vowels. The marks are aurally similar to a high degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory on which the examination is focused in the present case. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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.
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 non-English- and non-Dutch-speaking part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
The goods at issue have been found partly identical and partly similar (to various degrees) and the level of attention varies from average to above average. The earlier mark has a normal degree of distinctiveness.
The marks have been found visually and aurally similar to a high degree, without this impression being altered by any conceptual perception.
In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
In view of all the relevant factors in the present case and also the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those goods that are similar even only to a low degree. The similarity of the signs outweighs the low similarity of these goods.
Considering all the above, there is a likelihood of confusion on the part of the non-English- and non-Dutch-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.
The applicant argues that its sign has been used online since 2013 on several platforms and filed various pieces of evidence to substantiate this claim. However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has 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 which 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. Therefore, the applicant’s argument has to be set aside.
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.
The Opposition Division
Martin MITURA | Chantal VAN RIEL | Saida CRABBE |
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.