OPPOSITION No B 2 552 399

Norton America, LLC, 455 Glen Road, 02493, Weston, United States (opponent), represented by Kilburn & Strode LLP, Lacon London 84 Theobalds Road, WC1X 8NL, London, United Kingdom (professional representative)

a g a i n s t

Andover Norton International Ltd, Unit 4 Brunel Gate, Portway West Business Park, SP10 3SL Andover, United Kingdom (applicant), represented by Baron Warren Redfern, 1000 Great West Road, TW8 9DW Brentford, United Kingdom (professional representative).

On 18/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 552 399 is upheld for all the contested goods and services.

2. European Union trade mark application No 13 843 909 is rejected in its entirety.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 843 909 for the word mark ‘ANDOVER NORTON’. The opposition is based on, inter alia, European Union trade mark registration No 2 931 798 for the word mark ‘NORTON’. In relation to this earlier trade mark, the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. It also invoked Article 8(3) EUTMR and, in relation to the earlier non-registered trade marks ‘NORTON’ and , the opponent invoked Article 8(4) 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 European Union trade mark registration No 2 931 798.

1. The goods and services

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

Class 9: Eyeglasses; sunglasses; goggles; protective clothing, protective helmets; motorcycle electrical parts and gauges; namely, radios, speedometers, tachometers, batteries, wiring, cruise controls, switches, breaker points, turn signals, terminals, starters, circuit breakers, thermostats, battery chargers, armatures, voltage regulators; pre-recorded and blank video tapes and discs, pre-recorded and blank audio tapes and discs, telephones.

Class 12: Vehicles; motorcycles, motorcycle engines and parts, fittings and accessories for motorcycles.

Class 25: Clothing, headgear, outer clothing, sweaters, suspenders, scarves, bandannas, jackets, coats, vests, gloves, jeans, chaps, shirts, shorts, caps, hats, headgear for wear, belts, wristbands, coveralls, hosiery, halter tops, neckties, night shirts, nightgowns, pijamas, trousers, pants, rain suits, rain coats, shirts, sweatshirts, sweat pants, tank tops, T-shirts, underwear, head bands, leg warmers, aprons, mittens, lingerie, leather clothing, swimsuits, skirts, bibs; footwear, namely, shoes and boots, and parts of footwear, namely boot tips, sole plates, heel guards.

After the applicant’s limitation dated 30/11/2017, the contested goods and services are the following:

Class 12: Motorcycle parts, fittings and accessories.

Class 25: Clothing, headgear, footwear, for men, women and children.

Class 35: Retail services for the sale of motorcycle parts, fittings and accessories, through a retail outlet, by telephone, mail order or online via an internet website.

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 to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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

Motorcycle parts, fittings and accessories are identically contained in both lists of goods (including synonyms).

Contested goods in Class 25

The contested clothing, headgear for men, women and children are included in the opponent’s clothing, headgear. Therefore, they are identical.

The contested footwear, for men, women and children includes, as a broader category, or overlaps with, the opponent’s footwear, namely, shoes and boots. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services for the sale of motorcycle parts, fittings and accessories, through a retail outlet, by telephone, mail order or online via an internet website are similar to a low degree to the opponent’s parts, fittings and accessories for motorcycles.

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 and services found to be identical or similar to a low degree are directed at the public at large and for the goods in Class 12 also at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

3. The signs

NORTON	ANDOVER NORTON
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 common element ‘NORTON’ will be perceived as a surname by the English-speaking part of the public. Since it has no meaning in relation to the relevant goods and services it is distinctive to an average degree. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The element ‘ANDOVER’ of the contested sign will be perceived by the English-speaking part of the public as a town in the English county of Hampshire or as a surname. In any case, since it has no meaning in relation to the relevant goods and services (there is no connection between ‘ANDOVER’ perceived as a geographic place and the goods and services), it is distinctive to an average degree.

Visually and phonetically, the signs coincide in the distinctive element ‘NORTON’, and its sound, which constitutes the entirety of the earlier mark and fulfils an independent distinctive role in the contested sign. The signs differ in the additional element ‘ANDOVER’ of the contested sign and its pronunciation. Therefore, the signs are visually and phonetically similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are conceptually similar to an average degree to the extent that they have in common the concept conveyed by the coinciding and distinctive element ‘NORTON’ perceived as a surname. The additional element ‘ANDOVER’ of the contested sign perceived either as a town or as a surname does not alter this finding since ‘NORTON’ has an independent distinctive role in the contested sign.

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.

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. 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).

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).

The goods and services are partly identical and partly similar to a low degree. The attention of the public is average and the inherent distinctiveness of the earlier mark is normal.

The signs are visually, phonetically and conceptually similar to an average degree on account of the distinctive element ‘NORTON’ which constitutes the entirety of the earlier mark and fulfils an independent distinctive role in the contested sign. Even though the additional element ‘ANDOVER’ of the contested sign is distinctive, the Opposition Division considers that the differences between the signs are not sufficient to counteract the similarities and to safely differentiate them.

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, 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). The relevant public may assume that the contested sign ‘ANDOVER NORTON’ represents a sub-brand of the earlier mark ‘NORTON’ used for a different line of goods and services.

In its observations, the applicant argues that the trade marks have peacefully co-existed alongside one another for 40 years.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking public, including a likelihood of association. 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 2 931 798. It follows that the contested trade mark must be rejected for all the contested goods and services, including the services similar to a low degree given the relevant similarities between the signs.

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.

As the above mentioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(3), 8(4) and 8(5) EUTMR.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Boyana NAYDENOVA

Frédérique SULPICE

María del Carmen COBOS PALOMO

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.