ridewill | Decision 2803453 | Trademarkers LLC

ridewill | Decision 2803453

Date Published: Sep 25, 2017

OPPOSITION No B 2 803 453

MGTS SA, 12 avenue des Morgines, 1213 Lancy, Switzerland (opponent), represented by Cabinet Beau de Lomenie, 158, rue de L'Université, 75340 Paris Cédex 07, France (professional representative)

a g a i n s t

Ridewill S.R.L. Via Socrate n. 6, 22070 Casnate con Bernate, Italy (applicant), represented by Studio Legale Associato Cerino d'Angelo, Via Passariello n. 4, 80038 Pomigliano d'Arco, Italy (professional representative).

On 24/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 803 453 is partially upheld, namely for the following contested goods:

Class 12: Bicycles; spokes for bicycles, cycles; cycle saddles; pedals for cycles; covers for foot pedals on cycles; cycle mudguards; chain guards for bicycles; bicycle cranks; pumps for bicycles, cycles; pumps for inflating bicycle tyres; air pumps for bicycles for the inflation of tyres; air pumps for two-wheeled motor vehicles or bicycles; bicycle stands; bags for bicycles; saddlebags adapted for bicycles; handle bars for bicycles, cycles; handlebars [bicycle parts]; bicycle handlebar grips; tubeless tires [tyres] for bicycles, cycles; luggage racks for cycles; bicycle carriers; chains for bicycles, cycles; water bottle cages for bicycles; brakes for bicycles, cycles; bicycle tires [tyres]; bicycle gears; shock absorbers for bicycles; bicycle bells; motors for cycles; structural parts of bicycles; forks [bicycle parts]; wheels for bicycles, cycles; covers for bicycle saddles; saddle covers for bicycles or motorcycles; motorcycles; scooters [vehicles]; cycle cars; motorized scooters; motorcycle engines; kickstands for motorcycles; stands for motorcycles; tyres for motorcycles; motorcycle handlebars; shock absorbers for motorcycles; wheels for motorcycles; panniers for motorcycles; mudguards for motorcycles; luggage carriers for motorcycles; spokes for motorcycles; pedals for motorcycles; motorcycle chains; frames for motorcycles; fitted motorcycle covers; structural parts for motorcycles; panniers adapted for motorcycles; motorcycle handlebars; chains for driving motorcycles; handlebar grips for motorcycles; wheel rims for motorcycles; brake discs for motorcycles; front spacers [parts of motorcycles]; headlight mounts [parts of motorcycles]; handle bar dampers [parts of motorcycles]; handle bar grips [parts of motorcycles]; shift levers [parts of motorcycles].

2. European Union trade mark application No 15 727 043 is rejected for all the above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 727 043. The opposition is based on European Union trade mark registration No 11 090 578. 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 and services

The goods on which the opposition is based are the following:

Class 9: Helmets; sports helmets; motorcycle helmets; goggles; goggles for sports; sunglasses; protection masks; protective clothing; reflective clothing; jumper cables; sport bags adapted [shaped] to contain protective helmets; gloves for protection against accidents; flashing lights [luminous signals]; all above mentioned goods excluding snowboard products.

Class 12: Cycles; motorcycles; motorcycle parts and motorcycle accessories; bags for motorcycles; motorcycle saddlebags; Panniers adapted for motorcycles; luggage carriers for vehicles; scooters; scooter parts and scooter accessories; anti-theft devices for vehicles; protective shrouds for motorcycles; hub caps; tires; wheels and parts thereof; windshields.

Class 28: Knee guards; shin guards; protectors for elbows; protective wrist bands; all above mentioned goods excluding snowboard products.

The contested goods and services are the following:

Class 35: Advertising services relating to the sale of motor vehicles; Clerical services for the taking of sales orders; Administrative processing and organising of mail order services; Management of a retail enterprise for others; Presentation of goods on communication media, for retail purposes; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes.

An interpretation of the wording of the list of contested services is required to determine the scope of protection of these services.

The term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

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 bicycles are included in the broad category of the opponent’s cycles. Therefore, these goods are identical.

The contested panniers for motorcycles are identical to the opponent’s panniers adapted for motorcycles.

The contested panniers adapted for motorcycles are identically mentioned in both specifications.

The contested chain guards for bicycles are included in the broad category of the opponent’s anti-theft devices for vehicles. Therefore, these goods are considered identical.

The contested saddlebags adapted for bicycles; luggage racks for cycles are included in the broad category of the opponent’s luggage carriers for vehicles. Therefore, they are identical.

The contested tubeless tires [tyres] for bicycles, cycles; bicycle tires [tyres]; tyres for motorcycles are included in the broad category of the opponent’s tires. Therefore, these goods are identical.

The contested wheels for bicycles, cycles are included in the broad category of the opponent’s wheels. Therefore, these goods are considered identical.

The contested saddle covers for bicycles or motorcycles includes as a broader category the opponent’s protective shrouds for motorcycles. Since the Opposition Division cannot dissect the broad category of the contested goods they are considered identical to the opponent’s goods.

The contested fitted motorcycle covers are included in the broad category of the opponent’s protective shrouds for motorcycles. Therefore, these goods are considered identical.

Likewise, the contested motorcycles are identically included in both specifications.

The contested scooters [vehicles]; cycle cars; motorized scooters include, as a broader category, the opponent’s motorcycles It is impossible for the Opposition Division to filter these goods from the abovementioned categories. Since the Opposition Division cannot dissect ex officio the broad categories of the applicant’s goods, they are considered identical.

The contested motorcycle engines; kickstands for motorcycles; stands for motorcycles; motorcycle handlebars; shock absorbers for motorcycles; wheels for motorcycles; mudguards for motorcycles; luggage carriers for motorcycles; spokes for motorcycles; pedals for motorcycles; motorcycle chains; frames for motorcycles; structural parts for motorcycles; motorcycle handlebars; chains for driving motorcycles; handlebar grips for motorcycles; wheel rims for motorcycles; brake discs for motorcycles; front spacers [parts of motorcycles]; headlight mounts [parts of motorcycles]; handle bar dampers [parts of motorcycles]; handle bar grips [parts of motorcycles]; shift levers [parts of motorcycles] are included in the broad category of the opponent’s motorcycle parts and motorcycle accessories. Therefore, these goods are considered identical.

The opponent’s cycles include as a broad category more specific bicycles. Therefore, the remaining contested spokes for bicycles, cycles; cycle saddles; pedals for cycles; covers for foot pedals on cycles; cycle mudguards; bicycle cranks; pumps for bicycles, cycles; pumps for inflating bicycle tyres; air pumps for bicycles for the inflation of tyres; air pumps for two-wheeled motor vehicles or bicycles; bicycle stands; bags for bicycles; handle bars for bicycles, cycles; handlebars [bicycle parts]; bicycle handlebar grips; bicycle carriers; chains for bicycles, cycles; water bottle cages for bicycles; brakes for bicycles, cycles; bicycle gears; shock absorbers for bicycles; bicycle bells; motors for cycles; structural parts of bicycles; forks [bicycle parts]; covers for bicycle saddles are similar to the opponent’s cycles. Indeed, the applicant’s bicycle parts and accessories are essential for the normal use of bicycles (cycles). Therefore, the public may expect these goods to be produced by, or at least produced under the control of the manufacturer of the assembled bicycles (cycles). For example, even if these parts and accessories are manufactured by a subcontractor, as is common in at least part of the industry, they are often branded with the mark of the bicycle (cycle) manufacturer which, in the eye of the end user, is a factor that suggests that the goods are complementary. Furthermore, these goods may target the same public, be sold via the same distribution channels and to some extent be produced by the same undertakings.

Contested services in Class 35

The contested advertising services relating to the sale of motor vehicles; presentation of goods on communication media, for retail purposes; providing information about products via telecommunication networks for advertising and sales purposes refer to advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

The contested management of a retail enterprise for others refer to business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The contested clerical services for the taking of sales orders; administrative processing and organising of mail order services belong to are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing, administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment.

They above mentioned services are clearly different from all the goods covered by the opponent’s earlier mark in Classes 9, 12 and 28. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The above-mentioned services refer to various services which play an important role to support other businesses. Furthermore, the goods and services have different methods of use and are neither in competition nor complementary. 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 are directed at the public at large and at professionals with specific knowledge and 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

Image representing the Mark

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). 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public for which the terms ‘RiDE’ and ‘ridewill’ are meaningless.

Both marks are figurative marks.

The relevant public will perceive in the earlier mark the verbal element ‘RiDE’, written in grey, partly uppercase (letters ‘R’, ‘D’, ‘E’) and partly in lowercase (letter ‘i’) letters in bold italic script with thin black contours. This element is meaningless and, therefore, is normally distinctive in relation to the goods in question.

The verbal element ‘ridewill’ of the contested sign, will be perceived as such by the relevant public. The letters composing the sign are written in slightly stylised lowercase letters in black in italic script and therefore, the relevant public may expect that the first letter ‘r’ will also be slightly stylised. The contested sign has no meaning for the relevant public in the relevant territory and is, therefore, inherently distinctive in relation to the relevant goods.

As regards the figurative elements of the signs (stylisation of the letters, their colour, etc.), account must be taken that 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). Therefore, in view of the composition of the signs, the verbal elements are the ones that will be used to refer to them.

The marks under comparison have no elements which could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘R-i-D-E’ which entirely form the earlier mark and constitutes first four letters of the contested sign. Furthermore, this coincidence is inherently distinctive and is placed in the same initial position in both signs. In this regard it should be noticed that the consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that 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. The signs differ in the four final letters of the contested sign ‘w-i-l-l’.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘R-i-D-E’’, present identically in both signs. The pronunciation differs in the sound of the letters ‘w-i-l-l’’ of the contested sign.

Bearing in mind the abovementioned principles as regards the coincidence being placed in the beginning of the contested sign, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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 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 the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.
This principle applies to the case at stake because the relevant goods are identical and similar.

The marks in question share a similar structure; they are composed of one verbal element. Visually and aurally the sign are similar to an average degree due to the coincidence in their first letters ‘RiDE’, which at the same time constitute the earlier mark and the initial part of the contested sign. Consequently, these coinciding initial four letters will catch immediately the attention of the relevant public. The signs do not convey any concepts that would help a consumer to distinguish them.

The differentiating letters ‘will’ of the contested sign are placed in its final part, which make them less noticeable to the relevant public. Furthermore, as mentioned above, the figurative elements present in both signs such as stylisation of the letters, their colour, etc. are less important than the coincidence in the initial verbal element ‘RiDE’. As a result, these elements are not sufficient to safely exclude a likelihood of confusion between the marks in question, in relation to identical and similar goods.

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). Therefore, considering their similar structure (one verbal element), as well as the visual and aural similarities between the signs, it is concluded that consumers, relying on their imperfect recollection of the earlier mark, may think that the contested goods, found to be identical or similar, come from the same or economically linked undertakings. 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, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian-speaking part of the public, and, therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 11 090 578. 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 those of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

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

Gueorgui IVANOV

Monika CISZEWSKA

Robert MULAC

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.

ridewill | Decision 2803453

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