PRO | Decision 2654773
Date Published: Sep 28, 2017
OPPOSITION No B 2 654 773
Shimano Europe B.V., Industrieweg 24, 8071 CT Nunspeet, The Netherlands (opponent), represented by Muller & Eilbracht, Binckhorstlaan 287/2, 2516 BC Den Haag, The Netherlands (professional representative)
a g a i n s t
Lidl Stiftung & Co. KG, Stiftsbergstraße 1, 74172 Neckarsulm, Germany (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative).
On 05/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 654 773 is upheld for all the contested goods, namely
Class 6: Bicycle locks of metal.
Class 8: Hand tools and implements (hand-operated).
Class 9: Protective glasses [spectacles]; anti-glare glasses; spectacle frames; lenses for eyeglasses; spectacle cases; helmets for bicycles; all the aforesaid goods explicitly excluding coordinate measuring instruments and parts therefor.
Class 11: Bicycle lights.
Class 12: Accessories for bicycles, in particular bicycle trailers, bags for bicycles, pumps for bicycles, cycles; fittings and parts for bicycles in the form of repair kits; inner tubes for bicycles, cycles.
Class 18: Bags, pouches, in particular sports bags, carrier bags and shoulder bags; carrier bags and packing bags; saddlebags.
Class 21: Drinking bottles and containers.
Class 25: Clothing, footwear, gloves [clothing], headgear, all the aforesaid goods being solely for the sports sector.
2. European Union trade mark application No 14 468 904 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 468 904, namely against some of the goods in Classes 6, 8, 9, 11, 12, 18, 21 and 25. The opposition is based on, inter alia, European Union trade mark registration No 13 483 672. 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 13 483 672.
- The goods
The goods on which the opposition is based are the following:
Class 6: Locks and keys for bicycles.
Class 8: Hand tools (hand-operated).
Class 9: Bicycle computers, software for bicycles, display devices for bicycles, bicycle ergometers; bicycle helmets; spectacles, sports spectacles, sunglasses, eyewear and eyewear accessories; speed indicators; heart-rate monitors, electric accumulators for bicycles, anti-theft-warning apparatus, electric cables, electric parts and components for bicycles, automatic indicators for pressure in bicycle tires; clothing for protection against accidents.
Class 12: Bicycles, parts and accessories for bicycles, not included in other classes.
Class 18: Bags, saddle bags, shopping bags, sporting bags and pouches.
Class 21: Water bottles, cleaning apparatus (hand-operated) for bicycle chains.
Class 25: Clothing, footwear, headgear.
The contested goods are the following:
Class 6: Bicycle locks of metal.
Class 8: Hand tools and implements (hand-operated).
Class 9: Protective glasses [spectacles]; anti-glare glasses; spectacle frames; lenses for eyeglasses; spectacle cases; helmets for bicycles; all the aforesaid goods explicitly excluding coordinate measuring instruments and parts therefor.
Class 11: Bicycle lights.
Class 12: Accessories for bicycles, in particular bicycle trailers, bags for bicycles, pumps for bicycles, cycles; fittings and parts for bicycles in the form of repair kits; inner tubes for bicycles, cycles.
Class 18: Bags, pouches, in particular sports bags, carrier bags and shoulder bags; carrier bags and packing bags; saddlebags.
Class 21: Drinking bottles and containers.
Class 25: Clothing, footwear, gloves [clothing], headgear, all the aforesaid goods being solely for the sports sector.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the applicant list of goods, indicates that the specific goods 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).
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 6
The contested bicycle locks of metal are included in the broad category of the opponent’s locks for bicycles in Class 6. Therefore, they are identical.
Contested goods in Class 8
The contested hand tools (hand-operated) are identically contained in both lists of goods.
The contested implements (hand-operated) include as a broader category the opponent’s hand tools (hand-operated). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods in Class 8.
Contested goods in Class 9
The contested helmets for bicycles are identically contained in both lists of goods (including synonyms). Therefore, these goods are identical.
The contested protective glasses [spectacles] and anti-glare glasses are included in the broad category of the opponent’s spectacles in Class 9. Therefore, these goods are identical.
The contested lenses for eyeglasses are similar to the opponent’s spectacles in Class 9. The goods under comparison have the same nature, distribution channels, relevant public and producers. Moreover, they are complementary.
The contested spectacle cases and spectacle frames are similar to the opponent’s spectacles in Class 9, since they are complementary, share the same distribution channels (opticians), are directed at the same end users and will be usually manufactured or marketed by the same undertakings.
Even though the contested goods explicitly exclude ‘coordinate measuring instruments and parts therefor’ this would not change the above findings of identity or similarity of the goods.
Contested goods in Class 11
The contested bicycle lights are similar to the opponent’s bicycles in Class 12, because of their complementary link. As an essential part of bicycles, they are indispensable for the use of the applicant’s goods, target the same end users and are sold in the same bicycle shops.
Contested goods in Class 12
The contested accessories for bicycles, in particular bicycle trailers, bags for bicycles, pumps for bicycles, cycles; fittings and parts for bicycles in the form of repair kits; inner tubes for bicycles, cycles are identical to the opponent’s accessories for bicycles in Class 12.
Contested goods in Class 18
The contested bags, pouches, in particular sports bags, carrier bags and shoulder bags; carrier bags and packing bags; saddlebags are included in the opponent’s broad category of the opponent’s bags in Class 18. Therefore, these goods are identical.
Contested goods in Class 21
The contested drinking bottles and containers include as broader categories the opponent’s water bottles in Class 21. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods in Class 21.
Contested goods in Class 25
The contested clothing, gloves [clothing], footwear, headgear, all the aforesaid goods being solely for the sports sector are included in the broad categories of the opponent’s, respectively clothing, footwear, headgear in Class 25. 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 may vary from average to above average, depending on the price, (specialised) nature of the purchased goods. Some of the goods could be quite expensive, are normally purchased on an infrequent basis for a very specific purpose and their price could also be high, therefore, for these goods the level of attention of the relevant public is considered to be above average, for instance helmets for bicycles in Class 9 are not everyday purchases and usually involve considerable consideration before purchase due to their connection with safety.
- The signs
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 majority of the relevant public will see the last letter of the earlier mark as a fanciful representation of the letter ‘O’, since not only it is the most similar one to this letter but also the public will try to form a term that is known to them.
The element ‘PRO’ will be understood by the English-speaking part of the public and part of the non-English-speaking public as meaning ‘professional’ or reference hereto (11/09/14, T-127/13, Pro outdoor, EU:T:2014:767, § 58). For this part of the relevant public the word has a limited distinctiveness as it will be perceived as an indication that the relevant goods are professional goods or target professionals. Another part of the public, will understand the term ‘PRO’ as the Latin word ‘pro’ in the sense of ‘for, in favour of’ as this is the first and often only meaning for this word in languages such as for example Dutch and German. For this part of the relevant public, the term ‘PRO’ is neither laudatory nor weak in relation to the goods at hand and has therefore a normal degree of distinctiveness. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the latter part of the relevant public as this will be the part of the public most prone to confusion.
The marks have no elements that could be considered more distinctive or more dominant.
Visually, the signs coincide in the element ‘PRO’, which has a normal degree of distinctiveness for the relevant public, and which is the only verbal element of the marks. The signs differ in the stylization of the mentioned word. Regarding the typefaces in which the verbal elements of the marks are written, they will anyway not lead the consumer’s attention away from the elements it seems to embellish. Furthermore, the marks differ in the figurative element in the form of a wave on top of the contested sign and in the arrow inside of the letter ‘O’ in the earlier mark.
Regarding the figurative element in the contested sign and the arrow inside of the letter ‘O’ in the earlier mark, the Opposition Division points out the following: when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
These differences cannot offset the similarity between the marks arising from the common term ‘PRO’. Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the marks coincides in the sound of the word /PRO/, present identically in both signs. Therefore, the signs are, phonetically, identical.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as ‘PRO’, the signs are conceptually identical.
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 (eighth recital 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).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, ‘Lloyd Schuhfabrik’, § 20; ‘Sabèl’, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
In the present case, the goods have been found identical or similar and the level of attention of the public varies from average to above average. The signs are visually similar to an average degree, whereas aurally and conceptually they are identical.
Moreover, 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). Having said that, it is stressed that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Considering all the above, there is a likelihood of confusion on the part of the public that will understand the word ‘PRO’ as ‘for, in favour of’, such as for example Dutch and German speaking 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 the sake of completeness, it should be noted that in its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the term ‘PRO’. In support of its argument the applicant refers to several European Union trade mark registrations.
In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.
Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.
This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.
To this extent the Opposition Division notes that on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed by the applicant, including a Google picture search dated 4/08/2016, does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to trade marks that include element ‘PRO’. Having said that, it should be stressed that the sole fact that a Google picture search revealed many hits including different presentation of the term ‘PRO’ cannot lead to the applicant’s too far-reaching understanding that the word as such is hardly an indication of origin and that the specific logo style needs to be considered. Firstly, the opponent limited its search to images; secondly, there is nothing which could allow the Opposition Division to assume that the hits presenting different representation of the term ‘PRO’ are used as trade marks (not company names, working titles or simple images, the reference is made to the applicant’s allegations dated 9/08/2016, page 3) in relation to the goods at stake and enjoy trade mark protection within the relevant territory.
According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). Under these circumstances and in light of the evidence presented, the applicant’s claims must be set aside.
Moreover, the applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Furthermore, the previous cases referred to by the applicant are not relevant to the present proceedings. The Opposition Division would like to draw the applicant’s attention to the fact that in the present case we are dealing with the marks that consist of the graphically stylised term ‘PRO’ and not with marks that coincide in the term ‘PRO’ among other verbal elements.
In light of the foregoing, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 13 483 672. It follows that the contested trade mark must be rejected for all the contested goods.
For the sake of completeness it should be mentioned that as the earlier right, namely European Union trade mark registration No 13 483 672 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
Chantal VAN RIEL | Klaudia MISZTAL | 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.