ergonamics | Decision 2665860
Date Published: May 22, 2018
OPPOSITION No B 2 665 860
Franc Arnold, Bismarckstrasse 6a, 56068 Koblenz, Germany (opponent), represented by Meyerlustenberger Lachenal, 222 Avenue Louise, 1050 Brussels, Belgium (professional representative)
a g a i n s t
Nemesis Advanced Bicycle Components, Bijsterhuizen 2112, 6604LG Wijchen, the Netherlands (applicant).
On 25/01/2017, the Opposition Division takes the following
1. Opposition No B 2 665 860 is upheld for all the contested goods.
2. European Union trade mark application No 14 838 551 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 838 551. The opposition is based on European Union trade mark registration No 12 207 288. 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
The goods on which the opposition is based are the following:
Class 12: Bicycle parts and bicycle fittings, namely trailer hitches, brakes, brake pads, brake levers, frames for bicycles, bicycle forks, bike bags, pumps for bicycles and parts therefor, wheel rims, luggage carriers, gear units, handles, horns, bells, chains, chain rings, child seats, cranks, impellers, handlebars, steering wheels, handlebar bands, handlebar grips, handlebar fittings, hubs, pedals, wheels, tyres, pinions, rearview mirrors, saddles, saddle supports, safety belts and restraints, spokes, control units, bumpers, grip shifts, gears, mudguards, vibration dampers, bag and bottle holders, stems.
Class 18: Bags and backpacks for cyclists.
Class 25: Shorts and casual trousers, tee-shirts, headgear, pullovers, neck scarfs [mufflers], sweat shirts, singlets, jackets [clothing], jackets being sports clothing, gloves for cyclists, shoes, socks, all of the aforesaid goods being for cyclists.
The contested goods are the following:
Class 12: Cycle saddles; covers for bicycle saddles; bicycles; bicycle handlebar grips.
Class 25: Footwear; insoles for footwear; shoe inserts for non-orthopedic purposes.
Class 28: Stationary exercise bicycles.
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 and services 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 shall not be 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 cycle saddles; bicycle handlebar grips are identically contained in both lists of goods.
The contested covers for bicycle saddles are similar to the opponent’s saddles as they are complementary and producers are the same. Furthermore, the distribution channels and the targeted public can also coincide.
The contested bicycle is similar to the opponent’s frames for bicycles as they are complementary and producers are the same. Furthermore, the distribution channels and the targeted public also coincide.
Contested goods in Class 25
The contested footwear includes, as a broader category, the opponent’s shoes. 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 insoles for footwear; shoe inserts for non-orthopedic purposes are similar to the opponent’s shoes, because they are complementary and producers can be the same. Furthermore, the distribution channels and the targeted public can also coincide.
Contested goods in Class 28
The contested stationary exercise bicycles are devices equipped with some of the opponent’s goods in Class 12 such as saddles, pedals, frames for bicycles, bicycle forks and handlebars. Therefore, these products are considered similar to the extent that they are complementary to each other and that, manufacturers and distribution channels, are likely to be the same.
- 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 is considered to vary between average and higher than average for non-frequent purchases such as stationary exercise bicycles as the price of these goods can be relatively high.
- The signs
Earlier trade mark
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The earlier mark is a word mark consisting of the verbal element ‘ERGON’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the earlier mark is represented in upper or lower characters or a combination of those.
The contested sign is a figurative mark consisting of the verbal element ‘ergonamics’ written in a blue rather standard typeface, except for the letter ‘n’, which is written in orange and using a fanciful case typeface. The verbal element is partly surrounded by an irregular blue curve.
The signs have no element that could be considered more dominant (visually eye-catching) than other elements.
The word ‘ERGON’ in the earlier mark is ‘a unit of work or energy’, but this is irrelevant for the goods in question. However, the verbal element in the contested sign is very close to the English word ‘ergonomics’ which refers to ‘the study of how equipment and furniture can be arranged in order that people can do work or other activities more efficiently and comfortably’ (Collins English Dictionary online, at https://www.collinsdictionary.com) . Bearing in mind that the relevant goods are related to bicycles and footwear, it is considered that this element is weak, since it provides information about a characteristic of the goods, namely that they are particularly comfortable and will contribute to improving their efficiency.
Nevertheless, taking into account that the blue curve in the contested sign, is of a purely decorative nature and has, therefore, only a limited impact when assessing the likelihood of confusion between the marks, the word ‘Ergonamics’ of the contested mark is the sign’s more distinctive element of the contested sign Consequently, this element has only a limited impact when assessing the likelihood of confusion between the marks.
Visually, the signs coincide in the letters ‘ERGON’ placed at the beginning of the contested sign and constituting the earlier mark in its entirety. However, they differ in the additional letters ‘AMICS’ at the end of the contested sign. They also differ in the colours and in the figurative element of the contested sign.
The first parts of the conflicting marks coincide. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, 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 slight stylisation of the word element in the contested sign is not particularly elaborate or sophisticated and it will not lead the consumer’s attention away from the element it seems to embellish.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in five out of ten letters, namely ‘ERGON’, at the beginning of the contested sign and having a distinctive and independent role in the earlier mark. The pronunciation differs in the sound of the letters ‛AMICS’ at the end of the contested mark and which have no counterparts in the earlier mark. Despite the difference in length, it is considered that the sign are aurally similar to an average degree, because of the identical beginning which constitutes half of the contested sign.
Conceptually, the public in the relevant territory will perceive the earlier sign as ‘a unit of work or energy’, and the contested mark as referring to ‘ergonomics’ since it is very close to this word as already explained. As the signs will be associated with a dissimilar meaning, the signs are not conceptually similar.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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 (see judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.
In the present case, the goods are identical and similar and the signs are visually and aurally similar to an average degree on account that the earlier mark ‘ERGON’ is fully reproduced at the beginning of the contested sign. Account is also taken of the weak character of the contested sign with respect to the goods at issue.
Therefore, when consumers see both marks they are likely to think that the contested sign is economically connected with the earlier one and that they merely belong to another range, version or line of the goods (see judgment of 05/09/2007, T-220/06, JAKO-O Möbel und Spielmittel für die junge Familie GmbH, EU:T:2007:244). The consumer could perceive the contested sign as a sub-brand or a re-brand of the opponent.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 207 288. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.