PETROLICIOUS | Decision 2714205 - Petrol Industries B.V. v. May Moon Media Inc.

Date Published: Oct 2, 2017

OPPOSITION No B 2 714 205

Petrol Industries B.V., Kalundborg 6, 5026 SE Tiilburg, The Netherlands (opponent), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, The Netherlands (professional representative)

a g a i n s t

May Moon Media Inc., 5907 Blackwelder St., Culver City, California 90232, United States (of America) (applicant), represented by Martini Manna, Via Meravigli 16, 20123 Milano, Italy (professional representative).

On 27/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 714 205 is upheld for all the contested goods, namely:

Class 25:         Hats; Capes; Clothing; Sports clothing; Articles of sports clothing; Socks; Shirts; Pants; Tank tops; Belts [clothing]; Cardigans; Ties; Foulards [clothing articles]; Sweatshirts; Hooded sweatshirts; Scarves; Turtlenecks; Leather jackets; Sports jackets; Jackets (Stuff -) [clothing]; Boots for motorcycling; Skirts; Cycling Gloves; Clothing for cycling; Jeans; T-shirts; Jumpers; Trousers; Trousers shorts; Balaclavas; Printed t-shirts; Coats; Car coats; Wind coats; Leather coats; Jumpsuits.

2.        European Union trade mark application No 15 226 971 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 226 971, namely against all the goods in Class 25. The opposition is based on, inter alia, international trade mark registration No 1 218 818 designating the European Union. 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 international trade mark registration No 1 218 818 designating the European Union.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 25: Clothing; footwear; headgear; jackets, pants, shirts, sweaters, socks, belts, caps, hats, ties, dresses, shoes, slippers, sandals.

The contested goods are the following:

Class 25: Hats; Capes; Clothing; Sports clothing; Articles of sports clothing; Socks; Shirts; Pants; Tank tops; Belts [clothing]; Cardigans; Ties; Foulards [clothing articles]; Sweatshirts; Hooded sweatshirts; Scarves; Turtlenecks; Leather jackets; Sports jackets; Jackets (Stuff -) [clothing]; Boots for motorcycling; Skirts; Cycling Gloves; Clothing for cycling; Jeans; T-shirts; Jumpers; Trousers; Trousers shorts; Balaclavas; Printed t-shirts; Coats; Car coats; Wind coats; Leather coats; Jumpsuits.

As a preliminary remark, the Opposition Division notes that the applicant argues that it is a media and entertainment company that provides services in the classic car field and the services for which registration is sought have the purpose of selling merchandising goods via its website. To support this argument, the applicant submitted some printouts from its website.

In that regard, it should be clarified that, although some of the wording used in the contested list of goods concerns sport, the comparison of the goods must be carried out on an objective basis, taking into account the goods on which the opposition is based, including broad categories of goods, where applicable.

Clothing; socks; shirts; pants; belts [clothing]; ties are identically contained in both lists of goods.

The contested trousers and the opponent’s pants are synonyms. Therefore, they are identical.

The contested capes; sports clothing; articles of sports clothing; tank tops; cardigans; foulards [clothing articles]; sweatshirts; hooded sweatshirts; scarves; turtlenecks; leather jackets; sports jackets; jackets (stuff -) [clothing]; skirts; clothing for cycling; jeans; t-shirts; jumpers; trousers shorts; printed t-shirts; cycling gloves; coats; car coats; wind coats; leather coats; jumpsuits are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested hats; balaclavas are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested boots for motorcycling are included in the broad category of the opponent’s footwear. Therefore, they are identical.

2. 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 are directed at the public at large. The degree of attention is average.

3. 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 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.

The word ‘PETROL’ is meaningful in certain territories, for example in countries where English or French is spoken. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Although the earlier mark is figurative, it is composed of the word ‘PETROL’ in an extremely banal black typeface, which, therefore, lacks any distinctive character.

The contested sign is a figurative mark composed of the word ‘PETROLICIOUS’, above which is a figurative element depicting a black and white stylised racing car and its driver, which are co-dominant, to the extent that there is no element that could be considered clearly more dominant than other elements. The typeface in which ‘PETROLICIOUS’ is written is banal and, therefore, non-distinctive.

As stated above, the word ‘PETROL’ is meaningful in English. Therefore, the English-speaking part of the public will associate the contested sign with this word, that is, ‘a liquid that is used as a fuel for motor vehicles’ (Information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/petro on 12/06/2017).

Consequently, both signs will be perceived as referring to the concept of petrol. The word ‘Petrol’ is meaningless for the relevant goods and therefore it is distinctive.

As regards the figurative element in the contested sign, this is also meaningless for the relevant goods and it is of normal distinctiveness. However, it should be kept in mind 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).

Although the contested sign conveys an additional concept through the figurative element, the consumer will associate both signs with ‘petrol’ and the signs are therefore conceptually similar, at least, to an above average degree.

Visually, the signs coincide in the string of letters ‘PETROL’. However, they differ in the ending ‘-ICIOUS’ in the contested sign. Moreover, they differ in the additional figurative element of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are visually similar to a low degree.

Aurally, the signs coincide in the string of letters/sounds ‘PETROL’. However, they differ in the ending ‘-ICIOUS’ in the contested sign, and in the number of letters, which in the contested sign is twice the number in the earlier mark. Since the figurative element of the contested sign will not be pronounced, it is not subject to a phonetic assessment. Moreover, the similarities between the signs are at the beginnings of the signs and the earlier mark is entirely reproduced in the contested sign.

It is recalled that 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.

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

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

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). The interdependence principle is of particular importance in the present case, since the goods in question are identical.

The goods found to be identical target the public at large, whose degree of attention when purchasing those goods is average. 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).

It is frequent practice in the relevant market sector for companies to make small variations of their trade marks, for example by altering their typeface or colour, or adding terms or elements to them, to designate new lines of products, or to create a modernised version of the marks.

In the present case, the similarity between the signs - which results from the fact that, from the perspective of the English-speaking part of the public, the contested sign reproduces the earlier mark in its entirety, which will be perceived – is striking.

In the light of the foregoing, the degree of similarity between the signs is sufficient for it to be considered that a substantial part of the relevant public could reasonably believe that the goods, which are identical, come from the same undertaking, or from economically-linked undertakings.

As the signs differ merely in the additional suffix ‘–ICIOUS’ and the figurative element of the contested sign, the contested sign could be perceived as a ‘PETROL’ sub-brand.

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 element ‘PETROL’. In support of its argument, the applicant submitted a list of several trade mark registrations and printouts of websites in which the word ‘Petrol’ is used in relation to clothing and footwear by a dozen companies.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. Moreover, although the printouts of websites show use of the word ‘Petrol’, this does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include this word. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above and taking into account the interdependence principle, 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 international trade mark registration No 1 218 818 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right No 1 218 818 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

Marine DARTEYRE

Julie GOUTARD

Loreto URRACA LUQUE

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.