OPPOSITION No B 2 277 914

Ice IP S.A., rue des Tilleuls, 3, 8832, Rombach, Luxembourg (opponent), represented by Petosevic EOOD, 14, Saborna str., floor 3, office 6, 1000 Sofia, Bulgaria (professional representative)

a g a i n s t

ZEG Zweirad-Einkaufs-Genossenschaft eG, Longericher Str. 2, 50739 Köln, Germany (applicant), represented by Patentanwälte Buschhoff Hennicke Althaus,

Kaiser-Wilhelm-Ring 24, 50672 Köln, Germany (professional representative).

On 14/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 277 914 is partially upheld, namely for the following contested goods and services:

Class 9: Teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; data processing equipment, computers; computer software; helmets; protective and safety helmets; protective eyewear; eyeglass; sunglasses; goggles for sports; children's eye glasses; helmets for cyclists; computer programs for driving simulations or games.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; recreation information; event information (entertainment); providing electronic publications (not downloadable); services of a publishing firm, except printing; digital imaging; games on the internet; presentation of live performances; arranging and conducting of sport exhibitions, events and competitions; on-line publishing of electronic books and magazines; publication of printed matter (also in electronic form), except for advertising purposes; publication of magazines and books in electronic form, also on the internet; rental of sports equipment, except vehicles; videotape film production.

2. European Union trade mark application No 11 953 511 is rejected for all the above goods and services. It may proceed for the remaining goods.

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 11 953 511 ‘icevelo’ (word mark). The opposition is based on the following earlier trade marks:

1. European Union trade mark registration No 10 915 171 ‘ICE’ (word mark),

2. European Union trade mark registration No 10 488 914 ‘ICE-CAR’ (word mark),

3. international trade mark registration No 1 152 655 designating the European Union,

4. Benelux trade mark registration No 911 764 .

The opponent initially invoked Article 8(1)(a) and (b) EUTMR for all the earlier trade marks and, in addition, Article 8(5) EUTMR for the earlier trade mark No 4.

At a later stage, the opponent explicitly removed Article 8(1)(a) EUTMR as a ground of the opposition. Consequently, the opposition is not based on this ground any more.

CEASING OF EXISTENCE OF EARLIER EUTM NO 10 488 914

According to Article 46(1)(a) EUTMR, within a period of three months following the publication of an EUTM application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

(a) by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5);

[…].

Furthermore, according to Article 8(2) EUTMR, ‘earlier trade mark’ means:

(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking account, where appropriate, of the priorities claimed in respect of the marks referred to in Article 8(2)(a) EUTMR;

(ii) applications for a trade mark referred to in Article 8(2)(a) EUTMR, subject to their registration;

(iii) trade marks which are well known in a Member State.

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

In this respect, if, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid or it has not been renewed), the final decision cannot be based on it. The opposition may be upheld only with respect to an earlier right that is valid at the moment when the decision is taken. The reason why the earlier right ceases to have effect does not matter. Since the EUTM application and the earlier right that has ceased to have effect cannot coexist any more, the opposition cannot be upheld to this extent. Such a decision would be unlawful (13/09/2006, T‑191/04, Metro, EU:T:2006:254, § 33-36).

In the present case, the opposition is based on, inter alia, European Union trade mark registration No 10 488 914 ‘ICE-CAR’ (word mark).

However, this trade mark was cancelled by decision of 24/08/2018 in case C 18 763 which is now final.

As is apparent from the facts stated above, the earlier mark ceased to exist and thus cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 46(1)(a) EUTMR and Article 8(2) EUTMR.

The opposition must therefore be rejected as unfounded as far as it is based on this earlier mark.

SUBSTANTIATION – EARLIER IR NO 1 152 655 AND BX NO 911 764

According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part).

In the present case, the evidence filed by the opponent in relation to the earlier international trade mark registration No 1 152 655 consists of an extract from the ‘CTM-Online’ data base (now called ‘eSearch plus’ database) of the EUIPO.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because this document does not emanate from the administration by which the trade mark was registered, namely from the WIPO.

As mentioned in the EUIPO’s Guidelines for Examination of European Union Trade Marks, Part C Opposition, Section 1 Procedural Matters, p. 34, ‘the old practice of accepting printouts from eSearch plus (previously CTM-Online) for international registrations with EU designation only applies to oppositions with a filing date before 01/07/2012’. In the present case, the opposition was filed after that date, namely on 21/11/2013.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on the earlier international trade mark registration No 1 152 655.

As far as the earlier Benelux trade mark registration No 911 764 is concerned, according to Rule 19(3) EUTMIR (in the version in force at the time of commencement of the adversarial part), the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

In the present case, the evidence filed by the opponent to substantiate this earlier mark consists of a database print-out in French. This means that the evidence is not in the language of the proceedings (English).

On 29/11/2013 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 29/05/2014 (following an extension of deadline).

The opponent did not submit the necessary translations.

According to Rule 19(4) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on the earlier Benelux trade mark registration No 911 764.

Consequently, the opposition will now be examined in relation to the only remaining earlier right, namely EUTM No 10 915 171. However, it is important to note that this trade mark was partially cancelled by decision of 13/09/2018 in case C 21 246, namely for all goods in Class 12. The decision is now final. Consequently, the opponent’s goods in Class 12 invoked in the notice of opposition cannot be taken into account.

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 and services

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

Class 2: Agglutinants for paints; alizarine dyes; aluminium paints; aluminium powder for painting / aluminium powder for painters, artists and decorators; aniline dyes; annotto [dyestuff] / annatto [dyestuff]; anti-corrosive preparations; anti-corrosive bands; anti-fouling paints; anti-rust greases; anti-rust oils; anti-rust preparations for preservation; anti-tarnishing preparations for metals; asbestos paints; auramine; bactericidal paints; badigeon; binding preparations for paints / agglutinants for paints; bitumen varnish; black japan; blacks [colorants or paints]; bronze powder / bronze powder [paint]; bronzing lacquers; Canada balsam; caramel [food colorant]; carbon black [pigment]; carbonyl [wood preservative]; ceramic paints; coatings for roofing felt [paints] / coatings for tarred felt [paints]; coatings [paints]; cobalt oxide [colorant]; cochineal carmine; colophony; colorants for beverages; colorants for butter; colorants for beer; colorants / dyestuffs; colorants for liqueurs; copal; copal varnish; creosote for wood preservation; distempers; dyes; dyewood / coloring [colouring] wood; dyewood extracts / wood dyestuffs; enamels [varnishes]; enamels for painting / enamel paints; engraving ink; fireproof paints; fixatives for watercolors [watercolours] / fixatives for watercolors / fixatives for watercolours; fixatives [varnishes]; food dyes / food colorants; gamboge for painting; gildings; glazes [paints, lacquers]; gum resins; gum-lac / shellac; indigo [colorant]; ink for leather; ink for skin-dressing; lacquers; lamp black [pigment]; lime wash; malt caramel [food colorant]; malt colorants; marking ink for animals / marking inks for animals; mastic [natural resin]; metal foil for painters, decorators, printers and artists; metals in powder form for painters, decorators, printers and artists; mordants; oils for the preservation of wood / preservative oils for wood; orange lead / litharge; repositionable paint patches; paints; paper for dyeing Easter eggs; pigments; primers; printers' pastes [ink] / printing compositions [ink]; printing ink; protective preparations for metals; red lead / minium; natural resins, raw; saffron [colorant]; sandarac; shoe dyes; siccatives [drying agents] for paints; sienna earth; silver foil [leaf]; silver paste; silver emulsions [pigments]; silvering powders; soot [colorant]; stains for leather / mordants for leather; sumac for varnishes; thickeners for paints; thinners for paints; thinners for lacquers; titanium dioxide [pigment]; toner cartridges, filled, for printers and photocopiers; toners [ink] for photocopiers / ink [toner] for photocopiers; turmeric [colorant]; turpentine [thinner for paints]; undercoating for vehicle chassis / undercoating for chassis of vehicles / undersealing for chassis of vehicles / undersealing for vehicle chassis; varnishes; white lead; whites [colorants or paints]; whitewash; wood coatings [paints]; wood mordants; wood stains; wood preservatives; yellowwood [colorant].

Class 28: Air pistols [toys]; amusement machines, automatic and coin-operated; arcade video game machines; archery implements; ascenders [mountaineering equipment]; backgammon games; bags especially designed for skis and surfboards; artificial fishing bait; balls for games; baseball gloves; batting gloves [accessories for games]; bells for Christmas trees; billiard table cushions; billiard balls; billiard markers; billiard cues; billiard cue tips; billiard tables; bingo cards; bite indicators [fishing tackle]; bite sensors [fishing tackle]; bladders of balls for games; board games; bob-sleighs; body boards; body-building apparatus / body-training apparatus / body rehabilitation apparatus; bowling apparatus and machinery; bows for archery; boxing gloves; building blocks [toys]; building games; butterfly nets; camouflage screens [sports articles]; candle holders for Christmas trees; caps for pistols [toys]; chalk for billiard cues; chess games; chessboards; chest expanders [exercisers] / exercisers [expanders]; chips for gambling; Christmas trees of synthetic material; Christmas tree stands; clay pigeon traps; clay pigeons [targets]; climbers' harness; coin-operated billiard tables; confetti; conjuring apparatus; counters [discs] for games; creels [fishing traps]; cricket bags; cups for dice; darts; decoys for hunting or fishing / lures for hunting or fishing; dice; discuses for sports; divot repair tools [golf accessories] / pitch mark repair tools [golf accessories]; dolls; dolls' feeding bottles; dolls' beds; dolls' houses; dolls' clothes; dolls' rooms; dominoes; draughtboards / checkerboards; draughts [games] / checkers [games]; dumb-bells / bar-bells; edges of skis; elbow guards [sports articles]; electronic targets; explosive bonbons [Christmas crackers] / cosaques [toy fireworks]; fairground ride apparatus; fencing weapons; fencing masks; fencing gauntlets / fencing gloves; fish hooks; fishing tackle; flippers for swimming / swimming webs [flippers]; floats for fishing; flying discs [toys]; games; apparatus for games; gaming machines for gambling; gloves for games; golf clubs; golf bags, with or without wheels; golf gloves; gut for rackets; gut for fishing; appliances for gymnastics; hang gliders; harness for sailboards; harpoon guns [sports articles]; hockey sticks; horseshoe games; hunting game calls; ice skates; in-line roller skates; jigsaw puzzles; kaleidoscopes; kite reels; kites; knee guards [sports articles]; landing nets for anglers; lines for fishing; mah-jong; marbles for games; masts for sailboards; men's athletic supporters [sports articles]; mobiles [toys]; nets for sports; novelties for parties, dances [party favors, favours]; ornaments for Christmas trees, except illumination articles and confectionery; pachinkos; paintball guns [sports apparatus]; paintballs [ammunition for paintball guns] [sports apparatus]; paper party hats; paragliders; parlour games / parlor games; percussion caps [toys] / detonating caps [toys]; machines for physical exercises; piñatas; play balloons; playing balls; playing cards; plush toys; poles for pole vaulting; portable games with liquid crystal displays; practical jokes [novelties]; protective paddings [parts of sports suits]; punching bags; puppets / marionettes; quoits; rackets / bats for games; radio-controlled toy vehicles; rattles [playthings]; reels for fishing; ring games; rocking horses; rods for fishing; roller skates; rollers for stationary exercise bicycles; rosin used by athletes; roulette wheels; sailboards; scale model vehicles; scale model kits [toys]; scent lures for hunting or fishing; scooters [toys]; scrapers for skis; scratch cards for playing lottery games; seal skins [coverings for skis]; shin guards [sports articles]; shuttlecocks; skateboards; skating boots with skates attached; ski bindings; skis; skittles; skittles [games] / ninepins; sleighs [sports articles]; slides [playthings]; sling shots [sports articles]; slot machines [gaming machines]; artificial snow for Christmas trees; snow globes; snowboards; snowshoes; soap bubbles [toys]; sole coverings for skis; spinning tops [toys]; spring boards [sports articles]; starting blocks for sports; stationary exercise bicycles; strings for rackets; stuffed toys; surf boards; surf skis; surfboard leashes; swimming pools [play articles]; swimming kick boards; swimming belts; swimming jackets; swings; tables for indoor football; tables for table tennis; targets; teddy bears; tennis nets; tennis ball throwing apparatus; theatrical masks; toy pistols; toy masks; toy vehicles; toys for domestic pets; toys; trampolines; twirling batons; video game machines; water wings / floats for bathing and swimming; waterskis; wax for skis.

Class 35: Advertising; Business management; Business administration; Office functions; None of the aforesaid services relating to goods included in classes 3, 8, 9, 16, 18, 20, 21, 24, 25 and 32.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; None of the aforesaid services relating to playing ice hockey.

The contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; CDs, DVDs and Other digital data carriers; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software, fire-extinguishing apparatus; Tachometers; Odometers; Electric batteries, in particular for electric bicycles; helmets; Protective and safety helmets; Protective eyewear and protective gloves; Eyeglass; Sunglasses; Goggles for sports; Children's eye glasses; Cords and cases for spectacles; Helmets for cyclists; Computer programs for driving simulations or games.

Class 12: Vehicles; Apparatus for locomotion by land, air or water; Vehicles for land use; Two-wheeled vehicles; Non-motorised vehicles; Non-motorised land vehicles; Two-wheeled vehicles; Two-wheeled motorised vehicles; Non-motorised two-wheeled vehicles; Cycles; Electric cycles, Electric bicycles, Electric bicycles, Electric cars; Children's bicycles, Tricycles; Trailers for vehicles, in particular for two-wheeled vehicles; Transport vehicles; Mopeds, motorised bicycles, motorcycles; Scooters (vehicles); Sports bicycles; racing cycles; Parts, attachments and spare parts for all the aforesaid vehicles, included in class 12; Parts for bicycles and two-wheeled vehicles, included in class 12; Cycle frames; Safety seats for children, for vehicles; Child seats for bicycles; Strollers; Child seats for vehicles; Golf carts; Vehicle wheel tires [tyres]; Tires for bicycles, cycles; Casings for tyres; Hoses, valves and repair outfits for vehicle tyres; Luggage bags and luggage cases for two-wheeled vehicles; Bags and cases specially adapted for vehicles; Bags for bicycles; Baskets adapted for cycles; Bicycle transport bags and bicycle transport cases; Saddlebags for bicycles and motorcycles; Engines and motors for land vehicles and two-wheeled vehicles; Motors and engines for cycles; Electric motors for two-wheeled vehicles; Turn signals for vehicles; Anti-theft devices for vehicles; Luggage racks and luggage carriers for vehicles; Luggage carriers and luggage-carrying systems for two-wheeled vehicles; Luggage carriers for attachment to vehicles, In particular luggage carriers for attaching to two-wheeled vehicles.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Recreation information; Event information (entertainment); Providing electronic publications (not downloadable); Services of a publishing firm, except printing; Digital imaging; Games on the Internet; Presentation of live performances; Arranging and conducting of sport exhibitions, events and competitions; On-line publishing of electronic books and magazines; Publication of printed matter (also in electronic form), except for advertising purposes; Publication of magazines and books in electronic form, also on the Internet; Rental of sports equipment, except vehicles; Videotape film production.

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 data processing equipment, computers are similar to the opponent’s games in Class 28 (which include electronic and on-line games) as they usually coincide in producer, relevant public and distribution channels.

The contested computer software, computer programs for driving simulations or games are, or include, software or programs for playing driving games or other games. As such, they are similar to the opponent’s games in Class 28 as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested apparatus for recording, transmission or reproduction of sound or images encompasses a wide array of information technology and audiovisual equipment. These goods are similar to the opponent’s games in Class 28 as they usually coincide in producer, relevant public and distribution channels.

The contested helmets; protective and safety helmets; protective eyewear; eyeglass; sunglasses; goggles for sports; children's eye glasses; helmets for cyclists are, or include, various types of protective and safety equipment for doings sports (e.g. winter sports or water sports). They are similar to several opponent’s goods, for example skateboards; skis; snowboards; bob-sleighs or in-line roller skates in Class 28. It is common that they are sold through the same distribution channels and may be produced by the same producers as respective sporting articles. They also target the same relevant public.

The contested teaching apparatus and instruments are similar to a low degree to the opponent’s education; none of the aforesaid services relating to playing ice hockey in Class 41 as they have the same purpose. They usually coincide in relevant public. Furthermore they are complementary.

All the remaining contested goods in this class, namely scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving … apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; magnetic data carriers, recording discs; CDs, DVDs and other digital data carriers; mechanisms for coin-operated apparatus; cash registers, calculating machines, fire-extinguishing apparatus; tachometers; odometers; electric batteries, in particular for electric bicycles; protective gloves, cords and cases for spectacles, are dissimilar to all the opponent’s goods and services in Classes 2, 28, 35 and 41. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.

Contested goods in Class 12

The contested goods in the class are various types of vehicles and their parts and fittings. They are all considered dissimilar to all the opponent’s goods and services in Classes 2, 28, 35 and 41. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.

Contested services in Class 41

The contested education; providing of training; entertainment; sporting and cultural activities include, as broader categories, the opponent’s education; providing of training; entertainment; sporting and cultural activities; none of the aforesaid services relating to playing ice hockey, respectively. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested recreation information; event information (entertainment); games on the internet; presentation of live performances; videotape film production overlap with the opponent’s entertainment; none of the aforesaid services relating to playing ice hockey. Therefore, they are identical.

The contested arranging and conducting of sport exhibitions, events and competitions; rental of sports equipment, except vehicles overlap with the opponent’s sporting … activities; none of the aforesaid services relating to playing ice hockey. Therefore, they are identical.

The contested providing electronic publications (not downloadable) is similar to a low degree to the opponent’s providing of training; none of the aforesaid services relating to playing ice hockey as they usually coincide in distribution channels. Furthermore they are complementary.

The contested services of a publishing firm, except printing; digital imaging; on-line publishing of electronic books and magazines; publication of printed matter (also in electronic form), except for advertising purposes; publication of magazines and books in electronic form, also on the internet are similar to a low degree to the opponent’s entertainment; none of the aforesaid services relating to playing ice hockey as they usually coincide in distribution channels. Furthermore they are complementary.

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 and services found to be identical or similar (to varying degrees) are directed at the public at large. The degree of attention may vary from average to high, depending on the specialised nature of the goods/services, the frequency of purchase and their price.

c) The signs

ICE	icevelo
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘ICE’ contained in both marks will be perceived and understood as the English word ‘ice’ (i.e. ‘frozen water’) by a large part of the public in the EU because it is a relatively basic English word (cf. 08/09/2010, T‑112/09, Icebreaker, EU:T:2010:361, § 42). In addition, a substantial part of the same public in the EU will understand the element ‘velo’ of the contested sign as referring to a bicycle or cycling. This is because in French, the word ‘vélo’ means ‘bicycle’ and in many other languages, the word ‘velo’ appears in expressions such as ‘velocipede’, ‘velodrome’ (or their equivalents) or ‘velomateriál’ (meaning ‘cycling material’ in Czech and Slovak).

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in the EU who will perceive and understand both ‘ICE’ and ‘VELO’ in the manner mentioned above.

As regards the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Consequently, the relevant public will perceive the elements ‘ice’ and ‘velo’ in the contested sign.

The element ‘ICE’ included in both marks has no clear meaning in relation to the relevant goods and services and is, therefore, distinctive.

The applicant argues that the element ‘ICE’ is weak because there are several other marks containing the element ‘ICE’, namely ‘ICEBERG’ and ‘ICEPEAK’ and their variants, which are registered and used in the Benelux countries for clothing and watches. However, these arguments are not persuasive because the relevant goods in this case are not clothing and watches and the relevant territory is not limited only to the Benelux countries. Under these circumstances, the applicant’s claims must be set aside.

In addition, the applicant argues that the element ‘ICE’ in the earlier mark is descriptive for goods in Class 12 as it refers to an ‘ice wagon’ or an ‘ice truck’. However, as mentioned above, the goods in Class 12 were cancelled from the earlier EUTM No 10 915 171 which means that the applicant’s argument is irrelevant now.

The element ‘velo’ of the contested sign will be associated with cycling, as mentioned above. Bearing in mind that some of the relevant goods and services are, or can be, products used for cycling or services relating to cycling, this element is weak for these services, for example helmets in Class 9 or sporting activities in Class 41.

Nevertheless, the element ‘velo’ has no clear meaning in relation to the remaining relevant goods and services and is, therefore, distinctive for them.

The fact that the earlier trade mark is depicted in upper case and the contested sign in lower case has no bearing on the comparison of the marks, because both are word marks. Protection is therefore granted/sought for the word itself, and not for the particular way in which the mark is written.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. Consequently, the fact that the coinciding element ‘ICE’ is contained at the beginning of the contested sign is particularly significant.

Visually, the signs coincide in ‘ICE’ which is distinctive and is placed in the prominent position at the beginning of the marks. However, they differ in ‘-velo’ of the contested sign which has no counterpart in the earlier mark and which is weak for a part of the relevant goods and services.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛ICE’, present identically in both signs. The pronunciation differs in the sound of the letters ‛VELO’ of the contested mark, which have no counterparts in the earlier sign and which are weak for a part of the relevant goods and services.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually similar to an average degree.

In view of the above, the overall impressions created by the marks are similar.

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 the earlier EUTM No 10 915 717 is particularly distinctive for the relevant goods and services 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 and services 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

The marks have been found similar. The goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar.

The earlier trade mark’s degree of distinctiveness is average. The goods and services are directed at the public at large whose degree of attention will vary from average to high.

In this context, it should be recalled 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).

Furthermore, 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.

Indeed, since the earlier trade mark ‘ICE’ is totally included at the beginning of the contested sign ‘icevelo’, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public as defined above in section c) and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 and services found to be identical or similar (to varying degrees) to those of the earlier trade mark. It is considered that the degree of similarity of the marks is sufficiently high to cause confusion also for the goods and services which are similar only to a low degree.

The rest of the contested goods are dissimilar. As identity/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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Victoria DAFAUCE MENENDEZ

Vít MAHELKA

Lucinda CARNEY

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.