karobike | Decision 2775909
Date Published: Sep 24, 2017
OPPOSITION No B 2 775 909
Artega GmbH, Artegastrasse 1, 33129 Delbrück, Germany (opponent), represented by Spalthoff und Lelgemann, Huyssenallee 70/72, 45128 Essen, Germany (professional representative)
a g a i n s t
Mario Bloem, Marktstrasse 145, 20357 Hamburg, Germany (applicant).
On 21/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 775 909 is upheld for all the contested goods.
2. European Union trade mark application No 15 712 102 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 15 712 102 for the word mark ‘karobike’. The opposition is based on international trade mark registration No 1 138 235 designating the European Union for the word mark ‘KARO’. 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
Following the partial cancellation of the earlier mark for some of the goods at the request of the Office of origin in accordance with Article 6(4) of the Madrid Agreement or Article 6(4) of the Madrid Protocol, the goods on which the opposition is based are the following:
Class 12: Electric vehicles, components and replacement parts thereof as far as included in this class except cold-formed, rolled, drawn, pressed, sintered and cast components of common metal for electric vehicles in form of pipes, rods and profiles; furthermore except slide bearings and bearing bushes being parts of electric vehicles; furthermore except bearings and bushes being parts of electric vehicles; except metal profiles, metal pipes, metal rods and formed metal parts made of copper and copper alloys, all of them being parts of electric vehicles; except furthermore wheels, pneumatic tyres, rims as well as foam rubber rings [mousse].
The contested goods are the following:
Class 12: Vehicles.
The contested vehicles include, as a broader category, the opponent’s electric vehicles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
- 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 directed at the public at large.
The goods in question (vehicles) include cars; taking into consideration their price, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T-486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 39-42).
The degree of attention may also be above average for other types of vehicles, such as bicycles, considering that these are not everyday purchases and may involve some consideration before purchase for reasons of security features or technical characteristics and their price.
- The signs
KARO | karobike |
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).
Both marks are word marks. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The verbal element ‘KAROBIKE’, constituting the contested sign, has no meaning as a whole for the public in the relevant territory.
However, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Therefore, it is reasonable to assume that, when perceived in relation to the relevant goods (vehicles, which include motorcycles and bicycles), the element ‘BIKE’, included at the end of the contested sign, will be dissected from the mark and perceived by the English-speaking part of the relevant public as short for ‘bicycle’ or ‘motorcycle’. This element is non-distinctive in relation to the goods at issue, as it describes their nature. Its impact is, therefore, limited when assessing the similarity between the marks.
Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, for which the verbal element ‘BIKE’ in the contested sign is non-distinctive, as seen above.
The coinciding element ‘KARO’ in the marks under comparison designates ‘a small New Zealand tree or shrub, Pittosporum crassifolium with sweet-smelling brown flowers’. Consequently, a part of the relevant English-speaking public may be familiar with this meaning and may associate both marks with it. Another part of the English-speaking public will not be familiar with the name of the tree or shrub mentioned above and will perceive the verbal element ‘KARO’ in both marks as a meaningless term.
In any case, the verbal element ‘KARO’ in the marks is distinctive to an average degree, since it does not evoke or allude to any characteristics of the goods.
Visually and aurally, the signs coincide in the sequence of letters ‘KARO’, which form the earlier mark in its entirety and are included at the beginning of the contested sign. However, they differ in the additional second word, ‘BIKE’, of the contested sign.
The letters that the signs have in common, ‘KARO’, occur at the beginning of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right and from top to bottom, which makes the part placed at the beginning of the sign (the initial part) the one that first catches the attention of the reader.
The additional letters of the contested sign, ‘BIKE’, will be perceived as a meaningful word that will receive less attention from the relevant public because it is non-distinctive for the relevant goods.
Therefore, considering all of the above, the marks are visually and aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks for the English-speaking part of the public.
A part of the public taken into account will associate both marks with the name of a tree or shrub. The marks differ conceptually in the second word, ‘BIKE’, of the contested sign, which is non-distinctive. Therefore, the signs are conceptually highly similar for that part of the public.
Another part of the public will not attribute a meaning to the word ‘KARO’ but will perceive the word ‘BIKE’ in the contested sign as having a meaning. Since one of the signs (the earlier mark) will not be associated with any meaning, the signs are not conceptually similar. However, the difference from the conceptual point of view has little impact because the word ‘BIKE’ is non-distinctive for the goods at issue.
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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The goods are identical. The signs are visually, aurally and, for a part of the public, conceptually similar to a high degree on account of the element that they have in common, ‘KARO’, which is at the beginning of the contested sign. The signs differ as a result of the additional word of the contested sign, ‘BIKE’, which is, however, non-distinctive and of limited impact.
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).
Therefore, taking into account that the goods under comparison are identical, it is considered that the differences between the signs are not sufficient to offset the similar overall impressions created by the marks in the minds of consumers, even considering that the degree of attention that the relevant public will have for the goods at issue is higher than average.
In its observations, the applicant argues that the opponent uses its earlier trade mark in the market together with another verbal element.
The examination of the likelihood of confusion carried out by the Office is a prospective examination. In contrast to trade mark infringement situations – where the courts deal with specific circumstances in which the particular facts and the specific nature of use of the trade mark are crucial – the deliberations of the Office on likelihood of confusion are carried out in a more abstract manner.
For this reason, specific marketing strategies are not relevant. The Office must take the usual circumstances in which the goods covered by the marks are marketed as its benchmark, that is, those circumstances that are expected for the category of goods covered by the marks. The particular circumstances in which the goods covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58).
The applicant also argues that other companies have registered different trade marks with the same verbal element (i.e. ‘Volks’) as part of their marks and no oppositions were filed by the owner of the mark ‘Volks’. In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, the applicant did not file any evidence in that regard to prove coexistence of these marks in the market. Moreover, these trade mark registrations concern an element that is not present in the marks under comparison and are not relevant to the present proceedings.
Consequently, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, on the part of the English-speaking parts 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.
Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 138 235 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.
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
Adriana VAN ROODEN | Boyana NAYDENOVA | Frédérique SULPICE |
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.