OPPOSITION No B 2 465 394

H-D U.S.A., LLC, 3700 West Juneau Avenue, Milwaukee, Wisconsin 53208, United States of America (opponent), represented by Mathys & Squire LLP, The Shard 32, London Bridge Street, London SE1 9SG, United Kingdom (professional representative)

a g a i n s t

Harley Home Enterprise Limited, Unit A 8/F Chinaweal Ctr. 414-424 Jaffe Road Causeway Bay, Hong Kong, People’s Republic of China, (applicant), represented by Dr. Meyer-Dulheuer & Partner, Franklinstr. 46-48, 60486 Frankfurt, Germany (professional representative).

On 10/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 465 394 is upheld for all the contested goods.

2. Community trade mark application No 13 230 611 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all of the goods of Community trade mark application No 13 230 611. The opposition is based on, inter alia, Community trade mark registration No 83 931. The opponent invoked Article 8(1)(b) and Article 8(5) for this earlier right. In relation to the other earlier rights the opponent invoked Articles 8(1)(b), 8(5) and 8(4) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 Community trade mark registration No 83 931.

1. The goods

The goods on which the opposition is based are, amongst others, the following:

Class 9: Motorcycle electrical parts and gauges, namely, radios, speedometers, tachometers, batteries, wiring, cruise controls, switches, breaker points, radios, terminals, circuit breakers, thermostats, battery chargers, armatures, voltage regulators.

The contested goods are the following:

Class 9: Electrolysers; Power capacitors; Electrolytic capacitors; Power factor regulator to economize the delivery of electrical power in the nature of an electrolyser that plugs into a car or trucks cigarette lighter; Apparatus and instruments for regulating electricity; Electric regulating modules; Electric power controllers; Electric control devices for energy management; Regulating apparatus, electric; Chargers for electric batteries; Battery chargers.

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 Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 battery chargers and chargers for electric batteries include, as broader categories, the opponent’s motorcycle electrical parts and gauges, namely, battery chargers. 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 category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested apparatus and instruments for regulating electricity; electric regulating modules; regulating apparatus, electric and electric control devices for energy management include, as broader categories, the opponent’s motorcycle electrical parts and gauges, namely, voltage regulators. 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 category of the applicant’s goods, they are considered identical to the opponent’s goods.

As the purpose of the opponent’s motorcycle electrical parts and gauges, namely, voltage regulators is to automatically maintain a constant voltage level, they have a similar role to the contested power factor regulator to economize the delivery of electrical power in the nature of an electrolyser that plugs into a car or trucks cigarette lighter and electric power controllers which are used to regulate electric power, or watts. Therefore, these goods have a similar nature and purpose. Devices for regulating electricity are devices likely to be produced by the same manufacturers and be offered for sale via the same distribution channels. They are considered to be highly similar.

The contested electrolysers refer to a category of goods which make use of the process of electrolysis, which is the chemical change, especially decomposition, produced in an electrolyte by an electric current. One application of this technology is the electrolyser cell, which is a fuel cell producing oxygen and hydrogen, thus making it a potential alternative to batteries. This particular application has a similar purpose, therefore, to the opponent’s motorcycle electrical parts and gauges, batteries, namely to accumulate and store electricity. They may target the same end users via the same distribution channels and they can be interchangeable and are in competition with one another. It is impossible for the Opposition Division to filter these electrolyser cells from the applicant’s electrolysers. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered to be similar.

The contested power capacitors and electrolytic capacitors are electrical components which can both store and discharge electric energy. They are so ubiquitous that it is rare that an electrical product does not include at least one for some purpose. The earlier right has protection for (amongst others) motorcycle electrical parts and gauges, namely, switches, breaker points, circuit breakers. A switch is an electrical component that can break an electrical circuit, interrupting the current or diverting it from one conductor to another. Breaker points are a type of electrical switch, and the term typically refers to the switching device found in the distributor of the ignition systems of spark-ignition internal combustion engines. A circuit breaker is an automatically operated electrical switch designed to protect an electrical circuit from damage caused by overload or short circuit. Its basic function is to detect a fault condition and interrupt current flow. All these goods are electrical components, and capacitors will feature in electric circuits alongside the opponent’s switches. Therefore, whilst having different specific purposes these goods have a similar nature, are available to the same end users via the same distribution channels. They are considered to be similar.

2. The signs

HARLEY
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C514/06 P, ‘Armacell’, paragraph 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.

Visually, the signs are similar to the extent that they coincide in the verbal element ‘HARLEY’ which is the entirety of the earlier mark and the first verbal element of the contested sign. However, they differ in the additional verbal element of the contested sign, namely ‘HOME’ and the stylised typeface used on both of the contested sign’s verbal elements.

Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‘HARLEY’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the verbal element ‘HOME’ of the contested sign, which has no counterpart in the earlier mark.

Conceptually, the public may see the shared element ‘HARLEY’ as a surname. Furthermore, the public will understand the contested sign’s second verbal element as the word ‘HOME’, meaning a dwelling place; a person's house or abode; the fixed residence of a family or household; the seat of domestic life and interests. (The definition is taken from the Oxford English Dictionary, oed.com.) For this part of the public since the signs will be associated with a similar meaning, the signs are conceptually similar.

However, for the public which does not see the shared element as a surname, then only the contested sign will have a meaning, that of the word ‘HOME’, and as a result the signs are not conceptually similar.

Taking into account the abovementioned visual, aural and, for a part of the relevant public, conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier mark has no element that could be clearly considered more distinctive or more dominant (visually eye‑catching) than other elements.

The word ‘HOME’ of the contested sign will be associated with a dwelling place; a person's house or abode; the fixed residence of a family or household; the seat of domestic life and interests by the relevant public. Bearing in mind that the relevant goods of the contested sign could be intended for use in a home setting, rather than say in industrial setting, it is considered that this element is weak for these goods. The public who understands the meaning of that element will not pay as much attention to this weak element as to the other more distinctive elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The contested sign has no element which could be considered more dominant (visually eye‑catching) than other elements.

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.

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.

5. 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 similar are directed in part at the public at large (for example battery chargers) and in part at professionals working with electrical components such as manufacturers. The degree of attention will range from average to high.

6. Global assessment, other arguments and conclusion

The contested goods have been found to be partly identical and partly similar to various degrees. The earlier mark enjoys a normal degree of distinctiveness. The signs have been found to be visually, aurally and, for a part of the relevant public, conceptually similar, as they coincide in a verbal element, namely the surname ‘HARLEY’, which is the only element of the earlier mark and the first word of the contested sign.

The shared element ‘HARLEY’ is located at the beginning of the contested sign. 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. Consequently, the fact that the initial part of the contested sign is the same verbal element as the earlier mark has to be taken into account when assessing the likelihood of confusion between the marks.

The contested sign also contains the verbal element ‘HOME’, but this element has been found to be weaker than normal for the relevant goods (see section c). However, even if this element is not considered weak, the contested sign still includes the entirety of the earlier mark as its first element and one which has an independent distinctive character.

The signs also differ in the manner in which the verbal elements of the contested sign are presented. The Opposition Division finds that for signs consisting of both word and figurative components, the word component usually has a stronger impact on consumers than the figurative components. This is because the public will more readily refer to a sign by its verbal component than by describing its stylistic elements. Certainly in the present case these stylistic elements in the contested sign are not likely to have a huge impact on the end users as they will more readily refer to the sign by its verbal component rather than attempt to describe the stylisation used in the lettering.

Account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26).

Considering all the above, especially that the shared element ‘HARLEY’ is the entirety of the earlier mark, is of normal distinctiveness and has an independent distinctive character in the contested sign, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and, therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 83 931. It follows from the above, that the contested trade mark must be rejected in its entirety.

For the sake of completeness, the Opposition Division points out that there is no need to proceed further to the comparison of the signs for the remaining part of the public in the relevant territory, as the outcome of the present decision would still be the same.

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.

Likewise, as the earlier right leads to the success of the opposition and to the rejection of the contested trade mark in its entirety, there is no need to examine the other earlier rights invoked by the opponent (judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).

Furthermore, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) CTMR, there is no need to further examine the other ground of the opposition, namely Article 8(4) and Article 8(5) CTMR.

COSTS

According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Vita VORONECKAITĖ

Ric WASLEY

Gailė SAKALAITĖ

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.