CREVIT | Decision 2621723
Date Published: Apr 17, 2018
OPPOSITION DIVISION
OPPOSITION No B 2 621 723
Lidl Stiftung & Co. KG, Stiftsbergstraße 1, 74172 Neckarsulm, Germany
(opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg,
Germany (professional representative)
a g a i n s t
Crevit Italia S.R.L. unipersonale, Via Filippo Argelati 10, 20143 Milano, Italy
(applicant), represented by Bugnion S.P.A., Viale Lancetti 17, 20158 Milano, Italy
(professional representative).
On 02/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 621 723 is partially upheld, namely for the following
contested goods:
Class 9: Scientific, nautical, surveying, photographic, cinematographic,
optical, weighing, measuring, signalling, checking (supervision),
life-saving and teaching apparatus and instruments; apparatus for
recording, transmission or reproduction of sound or images;
magnetic data carriers, recording discs; cash registers, calculating
machines, data processing apparatus and computers.
2. European Union trade mark application No 14 439 657 is rejected for all the
above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
PRELIMINARY REMARK:
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS:
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 14 439 657 for the word mark ‘CREVIT’,
namely against all the goods in Class 9. The opposition is based on German trade
mark registration No 302 014 026 716 for the word mark ‘CRIVIT’. The opponent
invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 621 723 page: 2 of 8
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.
a) The goods
The goods on which the opposition is based are the following:
Class 4: Fuels for lighters.
Class 6: Metal bicycle locks, metal motorcycle locks.
Class 7: Hauling machines (net -) [fishing]; fittings for lifting and lower nets for
catching fish as part of machinery.
Class 8: Hand tools and implements (hand operated); cutlery, in particular
scaling knives and fish slicing knives for anglers; pen knives; harpoons; camping
cutlery.
Class 9: Protective motorcycle clothing; motorcycle crash helmets; protective
gloves for motorcyclists; sunglasses; nautical apparatus and instruments; diving
equipment included in this Class, in particular wetsuits, diving masks, life jackets
(inflatable or otherwise), snorkels, weights, weight belts, respiratory units, air tanks
for divers, regulators, marine depth finders, manometers, compasses, thermometers,
ear plugs for divers, nose clips; clothing, gloves for diving, footwear and headgear for
diving; hip protection for anglers; underwater cameras; photographic,
cinematographic, optical, weighing, measuring, signalling, checking (supervision), life
-saving and teaching apparatus and instruments; frequency meters; Global
Positioning System [GPS ] apparatus; eye glasses; sunglasses, snow goggles; swim
goggles; protective goggles; anti- glare glasses; frames for glasses; lenses for
glasses; glasses cases; helmets for bicycles; ski helmets and snowboard helmets;
tachometers; bottom timers; climbing helmets; reflective strips for clothing.
Class 11: Pocket torches; bicycle lights; lamps; LEDs; reflectors strips for
clothing; snap light sticks; cooking apparatus, refrigerating apparatus, apparatus for
water supply and sanitary purposes; electric cool boxes; barbecues.
Class 12: Accessories and parts for vehicles of all kinds, in particular for
motorcycles and trikes included in Class 12; golf equipment, namely golf trolleys;
bicycle accessories, in particular bicycle trailers, bags for bicycles, pumps for
bicycles; bicycle parts and accessories in form or repair sets; inner tubes for bicycles;
boats and boat accessories; small wagons for children; coaster wagons.
Class 13: Carbines.
Class 14: Clocks.
Decision on Opposition No B 2 621 723 page: 3 of 8
Class 18: Tennis equipment, namely tennis bags; badminton equipment, namely
badminton bags; squash equipment, namely squash bags; bags, pouches, sacks, in
particular sports bags, carrier bags and shoulder bags; packing bags; rucksacks and
backpacks, day packs; chest pouches; walking sticks; Alpen stock; trekking poles;
saddlery; rucksacks; duffel bags; transport sacks; panniers; saddlebags; umbrellas.
Class 20: Chairs and beds for outdoor use, in particular beach chairs and beach
beds, camping chairs and camping beds, bed chairs, mattresses for camping,
camping furniture and camping tables; sleeping bags for camping; air mattresses for
use when camping; inflatables cushions; fishing baskets, baskets in the sense of
fishing baskets; seat cushions for anglers.
Class 21: Drinking bottles and containers; cool bags, cool boxes, cooling
batteries; pots, camping pots; bait mixing bowls; camping crockery; picnic crockery;
containers for transporting and conserving liquids and food.
Class 22: Tents; awnings; fishing nets, lift and drop nets and fittings; sun sails;
hammocks.
Class 24: Woven materials and textiles for the manufacture of and use as sun
sails and awnings; bath linen; towels; sleeping bags (included in Class 24).
Class 25: Clothing, footwear, gloves, headgear, all of the aforementioned goods
exclusively for sports; boots for motorcycling, waterproof clothing, in particular
weatherproof clothing for motorcyclists, motorcycle clothing; clothing, footwear and
headgear for fishing; bath shoes; flip- flops; soles for footwear (also heated); shoe
spikes; gaiters.
Class 27: Mats, in particular for gymnastics, gymnasium mats, mats for use in
sporting activities, mats for travelling, trekking and camping, insulating mats.
Class 28: Games; playthings; gymnastic and sporting articles (included in Class
28); balls; badminton rackets, badminton nets; badminton accessories; squash
rackets; squash accessories; tennis rackets; tennis accessories; golf clubs, golf balls;
golf accessories; table tennis paddles; table tennis accessories; skis; ski fittings;
snow shoes; climbing harnesses; climbing accessories; surfing accessories; boxing
gloves; striking bags; boxing accessories; baseball bats; baseball gloves; hockey
sticks; hockey accessories; archery implements (sporting articles); bowstrings;
archery accessories; exercise and fitness equipment; trampolines; lines for fishing,
fishing equipment, rods for fishing and parts thereof; articles for anglers not included
in other Classes; fishing tackle, reels for fishing, lines for fishing, fish hooks, fishing
leads, floats for fishing; fishing lures (excluding live bait); artificial flies; bait [artificial];
bait jars; rod racks; fishing stools; spears for fishing rods; landing nets for fishing;
dummies for fishing; artificial lures for use in fishing, creels [fishing traps], fishing
gloves, harpoon guns (sporting articles); piles (for angling); swimming jackets;
containers and bags for fishing lines and fishing tackle; flippers; bags adapted for
use with sporting equipment; boule sets; dart boards and darts; articles for beach
sports; stunt kites; air mattresses; inflatable islands; water tubes; swimming pools
[play articles]; swimming kick boards; body boards; toboggans; skateboards; in-line
roller skates; ice skates; protectors, in particular for the back, shoulders, elbows,
knees and wrists (sporting articles).
Class 34: Lighters; firestones for lighters.
Decision on Opposition No B 2 621 723 page: 4 of 8
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; Apparatus for recording, transmission or reproduction of
sound or images; Magnetic data carriers, recording discs; Mechanisms for coin-
operated apparatus; Cash registers, calculating machines, data processing
apparatus and computers; Integrated circuit cards [smart cards]; Smart cards;
automated payment systems.
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 opponent’s 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the terms ‘namely’ and ‘exclusively’, used in the opponent’s list of goods to
show the relationship of individual goods to a broader category, are exclusive and
restrict the scope of protection only to the goods specifically listed.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from 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 9
The contested nautical, photographic, cinematographic, optical, weighing,
measuring, signalling, checking (supervision), life-saving and teaching apparatus and
instruments are identically contained in the opponent’s list of goods.
The contested scientific apparatus and instruments overlap with the opponent’s
teaching apparatus and instruments as many apparatus and instruments are used
both in science and for teaching purposes, e.g. microscopes. Therefore, they are
identical.
The contested surveying apparatus and instruments overlap with the opponent’s
optical apparatus and instruments. These goods coincide partially in surveying
optical apparatus and instruments, e.g. theodolites and beacons. Therefore, they are
identical.
The contested apparatus for recording, transmission or reproduction of sound or
images include, as a broader category the opponent’s photographic apparatus and
instruments. Since the Opposition Division cannot dissect ex officio the broad
category of the contested goods, they are considered identical to the opponent’s
goods.
Decision on Opposition No B 2 621 723 page: 5 of 8
The contested data processing apparatus and computers overlap with the opponent’s
photographic apparatus and instruments since these goods coincide partially in
digital photographic apparatus/instruments that process data. Therefore, they are
identical.
The contested magnetic data carriers, recording discs are similar to the opponent’s
photographic apparatus as they may coincide in the producers, end users and
distribution channels. Furthermore they are complementary to each other.
The contested cash registers and calculating machines are similar to a low degree to
the opponent’s measuring apparatus and instruments. Measuring apparatus and
instruments include special scales used in grocery stores which are directly linked to
the cash register. They may coincide in the distribution channels, relevant public and
producers.
The contested mechanisms for coin-operated apparatus; integrated circuit cards
[smart cards]; smart cards; automated payment systems are dissimilar to all the
opponent’s goods. They have different natures, purposes and methods of use. They
also do not coincide in the producers, distribution channels and end users and they
are neither complementary to nor in competition with each other.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods found to be identical or similar (to various degrees)
are directed at the public at large and at business customers with specific
professional knowledge or expertise.
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.
c) The signs
CRIVIT CREVIT
Earlier trade mark Contested sign
The relevant territory is Germany.
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 signs are word marks, ‘CRIVIT’ and ‘CREVIT’. Neither of them has a meaning
for the goods in question. Therefore, they are normally distinctive.
Decision on Opposition No B 2 621 723 page: 6 of 8
Visually, the signs coincide in the sequence of the letters ‘C-R-*-V-I-T’ and they differ
just in the single letters ‘I’ and ‘E’ contained respectively in the middle of the earlier
and contested sign.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛C-R-* -V-
I-T’, present identically in the same sequence in both signs. They have the same
number of syllables (two), rhythm and intonation. The pronunciation differs, however,
in the sound of the letters ‛I’ and ‘E’ placed in the middle of the earlier sign,
respectively of the contested mark.
Therefore, the signs are aurally highly similar.
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.
d) 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.
e) Global assessment, other arguments and conclusion
Likelihood of confusion covers situations where the consumer directly confuses the
trade marks themselves, or where the consumer makes a connection between the
conflicting signs and assumes that the goods/services covered are from the same or
economically linked undertakings.
In the present case the goods are partly identical, partly similar (to various degrees)
and partly dissimilar. The signs are visually and aurally highly similar. The argument
of the opponent that the marks are aurally nearly identical because the differing
vowels ‘I’ and ‘E’ are short, resulting in that they will not be particularly emphasized in
the pronunciation and can thus be easily missed, cannot be accepted. Following
German pronunciation rules the first vowel of these signs will be pronounced longer
than the second vowel. It is also not evident how they could be missed in the
pronunciation of the signs as they do not form a diphthong or other phonetic
configuration with the neighbouring letters resulting in their alteration or omission in
Decision on Opposition No B 2 621 723 page: 7 of 8
the pronunciation. Moreover, they are clearly perceptible vowels which are placed in
a central position of the signs and cannot be missed in the pronunciation.
The signs coincide in their beginnings ‘CR’ and in their endings ‘VIT’. They differ just
in a single letter, namely ‘I’ and ‘E’, in the middle of the signs, where the attention is
lowest. Account should also 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 26).
The similarities between the signs, namely five letters out of six which are placed in
an identical position prevail over their differences which comprise just in one single
letter in the middle of the signs. The similarities are likely to lead the relevant public
into thinking that the conflicting identical or similar (to various degrees) goods come
from the same or economically linked undertakings. This applies also to the goods
that were found similar to a low degree since it is compensated by the high degree of
similarity between the signs. Even for consumers who will display a high degree of
attention confusion as regards the trade origin of the goods in question cannot be
avoided.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and therefore the opposition is partly well founded
on the basis of the opponent’s German trade mark registration.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar (to various degrees) to those of the earlier trade
mark. The signs are so similar that a likelihood of confusion also applies to those
goods where only a low degree of similarity has been found.
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.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
Decision on Opposition No B 2 621 723 page: 8 of 8
The Opposition Division
Sigrid DICKMANNS Alexandra APOSTOLAKIS Julia SCHRADER
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.