MOTOFORCE | Decision 2718768
Date Published: Sep 24, 2017
OPPOSITION No B 2 718 768
Motorola Trademark Holdings, LLC, 222 W. Merchandise Mart Plaza, Suite 1800, Chicago, Illinois 60654, United States of America (opponent), represented by Brandstock Legal Rechtsanwaltsgesellschaft mbH, Rückertstr. 1, 80336 München, Germany (professional representative)
a g a i n s t
Ricambio Rapido srl, Via 1° Maggio 4, 25050 Ome (BS), Italy (applicant), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartGmbB, Am Kaffee-Quartier 3, 28217 Bremen, Germany (professional representative).
On 30/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 718 768 is partially upheld, namely for the following contested goods:
Class 9: Nautical, surveying, photographic, cinematographic, optical, measuring, teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carries; recording discs; cash registers; calculators; data processing equipment and computers; computers; computers; notebook computers; computer screens; computer operating programmes, recorded; computer programs (recorded); computer programs [downloadable]; computer software, recorded; peripherals adapted for use with computers; processors (central processing units); modems; computer hardware monitors; computer keyboards; data processing apparatus; chips (integrated circuits); diskettes; navigation apparatus for vehicles (on-board computers); navigational instruments; satellite navigational apparatus; pocket translators, electronic; electronic agendas; TV sets; optical apparatus and instruments; collectors (electric); contacts, electric; regulating apparatus, electric; headphones; chargers for electric batteries; loudspeakers; speaker enclosures; readers [data processing equipment]; measuring apparatus; measuring devices, electric; microphones; monitors (computer programs); objectives (optics); optical data carriers; optical disc; plates for batteries; radios; vehicle radios; stage lighting regulators; head cleaning tapes [recording]; relays, electric; recording discs; horns for loudspeakers; switchboards; commutators; electric apparatus for commutation; electricity distribution consoles; control panels (electricity); screens [photography]; memories for data processing equipment; cases especially made for photographic apparatus and instruments; games software; stands for photographic apparatus; camera tripods; telephones; telegraphs [apparatus]; fax devices; distance measuring apparatus; teleprompters; word processing apparatus; apparatus for the reproduction of sound; personal stereos; walkie-talkies; enlarging apparatus (photography); videotapes; video screens.
2. European Union trade mark application No 15 021 728 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 some of the goods of European Union trade mark application No 15 021 728 ‘MOTOFORCE’, namely against all the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 12 314 761 ‘MOTO’. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 314 761.
- The goods
The goods on which the opposition is based are the following:
Class 9: Telephones, mobile phones, smartphones, tablet computer, computers, handheld and mobile digital electronic devices with wireless communication capabilities, radio telephones, pagers, two-way radios, radio transmitters, radio receivers, radio transceivers, electronic organizers, and related accessories for the foregoing goods, namely, headsets, headphones, microphones, speakers, carrying cases, protective cases and covers, protective or decorative skins, belt clips; electronic docking stations, stands, and mounts for mobile phones, tablets, handheld computers, and handheld and mobile digital electronic devices with wireless communication capabilities; cables and connectors, and keyboards; radio base stations, switches, routers, computers, computer software and programs used for transmission or reproducing or receiving of sound, images, video or data over a telecommunications network or system between terminals and for enhancing and facilitating use and access to computer networks and telephone networks; computer software for use in general purpose database management; computer e-commerce software to allow user to safely place orders and make payments in the field of electronic business transactions via a global computer network or telecommunications network; computer software for training and product support for computers and mobile phones in the field of communications; computer utility software for performing computer maintenance work; computer game software for mobile handsets; computer software and programs featuring music, movies, animation, electronic books, games in the field of general entertainment; computer software for the distribution of information and interactive multimedia content containing text, images, video and sound to users in the field of communications; computer software and programs for management and operation of wireless telecommunications devices; computer software for accessing, searching, indexing and retrieving information and data from global computer networks and global communication networks, and for browsing and navigating through web sites on said networks; computer software for sending and receiving short messages and electronic mail and for filtering non-text information from the data; analog and digital radio transceivers or receivers for data, voice, image and video communication, modems, global positioning units, batteries, battery chargers, power adapters, and antennas; cameras; digital cameras, digital video cameras; wearable computing peripherals; personal wearable and interchangeable electronic modules, namely personal identifiers for telephones, mobile phones, smartphones, tablets, computers, handheld and mobile digital electronic devices with wireless communication capabilities.
The contested goods are the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; alarms; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carries; recording discs; cash registers; calculators; data processing equipment and computers; computers; computers; notebook computers; computer screens; computer operating programmes, recorded; computer programs (recorded); computer programs [downloadable]; computer software, recorded; peripherals adapted for use with computers; processors (central processing units); modems; computer hardware monitors; computer keyboards; data processing apparatus; chips (integrated circuits); diskettes; navigation apparatus for vehicles (on-board computers); navigational instruments; satellite navigational apparatus; pocket translators, electronic; electronic agendas; TV sets; opticians’ goods; optical apparatus and instruments; spectacles (optics); spectacle cases; spectacle frames; lenses for eyeglasses; eyeglass cases; eyeglass frames; pince-nez chains; pince-nez sunglasses; sports glasses; contact lenses; collectors (electric); contacts, electric; regulating apparatus, electric; headphones; chargers for electric batteries; lasers; not for medical use; laser pointers (luminous pointers); loudspeakers; speaker enclosures; readers [data processing equipment]; luminous signs; measuring apparatus; measuring devices, electric; microphones; monitors (computer programs); neon signs; objectives (optics); optical data carriers; optical lanterns; optical disc; oscillographs; plates for batteries; radios; vehicle radios; stage lighting regulators; head cleaning tapes [recording]; cleaning apparatus for sound recording discs; relays, electric; sound locating instruments; recording discs; horns for loudspeakers; switchboards; commutators; electric apparatus for commutation; electricity distribution consoles; control panels (electricity); mechanical signs; screens [photography]; protective helmets for sports; memories for data processing equipment; cases especially made for photographic apparatus and instruments; games software; stands for photographic apparatus; camera tripods; electrified rails for mounting spot lights; telephones; telegraphs [apparatus]; fax devices; distance measuring apparatus; teleprompters; word processing apparatus; apparatus for the reproduction of sound; personal stereos; walkie-talkies; enlarging apparatus (photography); videotapes; video screens.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the opponent’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.
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.
The contested computers (listed three times in the applicant’s specification), modems, microphones, telephones, headphones; electronic agendas; chargers for electric batteries; loudspeakers are identically contained in both lists of goods (including synonyms).
The contested data processing equipment; data processing apparatus; word processing apparatus include, as broader categories, the opponent’s computers. 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 nautical, surveying, measuring (listed twice) apparatus and instruments, navigation apparatus for vehicles (on-board computers); navigational instruments; satellite navigational apparatus; measuring devices, electric; distance measuring apparatus include, as broader categories, or overlap with the opponent’s global positioning units. 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 photographic, cinematographic apparatus and instruments; apparatus for recording, transmission or reproduction (listed twice) of sound or images; teaching apparatus and instruments, optical apparatus and instruments (listed twice) include, as broader categories, or overlap with the opponent’s cameras. 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 cash registers; notebook computers are included in the broad category of, or overlap with, the opponent’s computers. Therefore, they are identical.
The contested computer operating programmes, recorded; computer programs (recorded); computer programs [downloadable]; computer software, recorded; monitors (computer programs) include, as broader categories, or overlap with the opponent’s computer software for use in general purpose database management. 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 radios; vehicle radios include, as broader categories, or overlap with the opponent’s radios transmitters. Therefore, they are identical.
The contested cases especially made for photographic apparatus and instruments are included in the broad category of the opponent’s carrying cases. Therefore, they are identical.
The contested games software includes, as a broader category, the opponent’s computer game software for mobile handsets. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested magnetic data carriers are highly similar to the opponent’s computers, as they can have the same producers, end users and distribution channels. Furthermore, they are complementary.
The contested TV sets; screens [photography]; video screens; stands for photographic apparatus; camera tripods; teleprompters; enlarging apparatus (photography); videotapes; head cleaning tapes [recording] are all audio-visual devices or accessories closely related to the opponent’s cameras, which are also audio-visual devices. These goods usually have the same manufacturers; they are usually found at the same points of sale and they target the same public. Finally, some of the contested goods, such as camera tripods, are complementary to the opponent’s goods. Therefore, they are similar.
The opponent’s power adapters are a type of external power supply and, therefore, they are at least similar to the contested regulating apparatus, electric and apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; plates for batteries; stage lighting regulators, since all these goods are intended to transmit, store, charge, adapt or regulate electrical current. Therefore, they have the same nature and similar purposes. They are manufactured by the same producers and sold through the same undertakings, and they also target the same end users.
The contested computer screens; computer hardware monitors; computer keyboards; peripherals adapted for use with computers; memories for data processing equipment; readers [data processing equipment]; recording discs (listed twice); optical data carriers; optical disc; diskettes are all either physical parts and components of a computer or data storage devices readable by a computer and, therefore, they are similar to the opponent’s computers, as these goods can have the same producers, end users and distribution channels. Furthermore, they are complementary.
The contested pocket translators, electronic are similar to the opponent’s electronic organizers to the extent that they are electronic devices whose purpose is to make a particular task easier. Consequently, these goods have very similar natures and can be manufactured by the same producers. They can also be acquired through the same distribution channels and can target the same public.
The contested speaker enclosures are enclosures in which speaker drivers and associated electronic hardware are mounted and the contested horns for loudspeakers are elements that use an acoustic horn to increase the overall efficiency of the driver element. To that extent, they are similar to the opponent’s speakers, since these goods are complementary and are likely to be manufactured and sold though the same undertakings. Finally, they can also have the same end consumers.
The contested personal stereos are portable audio players that allow the user to listen to music through headphones. Therefore, they are similar to the opponent’s headphones, since these goods are complementary, they are likely to have the same manufacturers and, if they are not sold together, they can be sold at the same points of sale. Finally, they also have the same end consumers.
The contested relays, electric; commutators; electric apparatus for commutation; electricity distribution consoles; control panels (electricity); chips (integrated circuits); collectors (electric); contacts, electric are closely related to the opponent’s switches, since all of these goods are electrical components. Consequently, they have similar natures and are likely to be manufactured and sold though the same undertakings. Finally, they can also have the same end consumers. Therefore, they are similar.
The contested switchboards; telegraphs [apparatus]; fax devices; walkie-talkies are items of point-to-point telecommunications equipment and, therefore, they are similar to the opponent’s telephones, since these goods have the same purpose. Although the contested switchboards and telegraphs target a more specialised public than the opponent’s goods, their manufacturers and providers may still be the same.
The contested objectives (optics) can be the lens or a combination of lenses that forms the image in a camera or projector. As such, they are similar to the opponent’s cameras, since these goods are complementary and they usually have the same manufacturers and distribution channels. Furthermore, they also target the same public.
The contested processors (central processing units) are the electronic circuitries within computers that carry out the instructions of a computer program and, therefore, they are similar to a low degree to the opponent’s computers, as they are complementary and can be manufactured by the same producers.
The contested calculators are similar to a low degree to the opponent’s computers to the extent that these goods have the same purpose and can have the same end users.
Nevertheless, there is not a sufficiently close relationship between the contested scientific, checking (supervision), weighing, life saving, signalling apparatus and instruments; alarms; opticians’ goods; spectacles (optics); spectacle cases; spectacle frames; lenses for eyeglasses; eyeglass cases; eyeglass frames; pince-nez chains; pince-nez sunglasses; sports glasses; contact lenses; lasers; not for medical use; laser pointers (luminous pointers); luminous signs; neon signs; optical lanterns; oscillographs; cleaning apparatus for sound recording discs; sound locating instruments; mechanical signs; protective helmets for sports; electrified rails for mounting spot lights and any of the opponent’s goods, which are communication equipment, computers and computer peripherals, electronic devices and related accessories, cables and electronic components, software, audiovisual apparatuses and wearables. Indeed, these goods are of different natures and they do not have the same purpose. They have different methods of use and are neither complementary nor in competition. Furthermore, they would not usually be provided by the same undertakings. Therefore, they are dissimilar.
- 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 different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
- The signs
MOTO | MOTOFORCE |
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.
Average consumers normally perceive a mark as a whole and do not engage in an analysis of its various details. However, the fact remains that, when perceiving a word sign, they will break it down into word elements which, for them, have a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).
The word ‘moto’ is the diminutive form of ‘motorcycle’ in some languages, such as French. Furthermore, ‘moto’ is commonly used as a prefix meaning ‘motorbike’ or at least referring to motors or motor vehicles, for example in the word ‘motocross’. The French-speaking part of the public will therefore associate the earlier mark and the first part of the contested sign, ‘MOTO’, with the abovementioned meanings, namely motorbikes or motors/motor vehicles. The final part of the contested sign, ‘FORCE’, will be understood as ‘strength, power’, since the equivalent word in French is the same. Therefore, the Opposition Division finds it relevant to focus the comparison of the signs on the French-speaking part of the public.
The element ‘MOTO’ in the contested sign could be associated with some of the contested goods, such as navigation apparatus for vehicles (on-board computers). Therefore, its distinctiveness is limited for these goods. The element ‘FORCE’ is laudatory, since it alludes to some of the characteristics of the goods, indicating that they are powerful or long-lasting. Therefore, it is weak. Overall, ‘MOTO’ is more distinctive than ‘FORCE’.
Contrary to the applicant’s argument, the word ‘FORCE’ in the contested sign does not occupy a dominant position, since it is a word mark and word marks do not have visually dominant elements.
Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Visually and aurally, the signs coincide in the four letters/sounds ‘MOTO’, which constitute the earlier sign in its entirety and are placed at the beginning of the contested sign. They differ in the additional letters/sounds ‘FORCE’ at the end of the contested sign, which have no counterparts in the earlier mark and which constitute a weak element.
In view of the above, the signs are considered visually and aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, they are conceptually similar to a high degree.
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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.
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
According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).
According to the same line of case-law, 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). However, account should be 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.
In the present case, the degree of attention may vary from average to high. The goods are partly identical, partly similar to different degrees and partly dissimilar. The signs are visually, aurally and conceptually similar to a high degree on account of the fact that the letters ‘MOTO’ are placed at the beginning of the contested sign and constitute the earlier mark in its entirety. Furthermore, since the word ‘FORCE’, which will be perceived as a separate element in the contested sign, is weak, consumers are likely to make a connection between the signs and assume that the goods in question originate from the same undertaking or economically linked undertakings. Indeed, it must be pointed out that likelihood of confusion includes the likelihood of association.
In addition, the relevant consumer will most probably perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Although it is true that consumers normally exercise a certain degree of attention in relation to the goods at issue, even sophisticated consumers are not immune to trade mark confusion.
Moreover, 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).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 12 314 761. 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.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to different degrees to those of the earlier trade mark.
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 opponent has also based its opposition on earlier European Union trade mark registration No 14 939 219 for the word mark ‘MOTO X FORCE’.
Since this mark covers a narrower scope of goods than the mark already compared, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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 will 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
Justyna GBYL | Sandra IBAÑEZ | Boyana NAYDENOVA |
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.