OPPOSITION No B 2 611 914

Aston Martin Lagonda Limited, Banbury Road, Gaydon, Warwick CV35 ODB, United Kingdom, (opponent), represented by Lewis Silkin LLP, 5 Chancery Lane, Clifford's Inn, London EC4A 1BL, United Kingdom (professional representative)

a g a i n s t

Hammer SRL, Via F.LLI Calvi 6, 24060 Casazza, Italy, (applicant)

On 19/01/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 611 914 is upheld for all the contested goods.

2. European Union trade mark application No 14 573 018 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 573 018, namely against all the goods in Classes 9, 25 and 28. The opposition is based on, inter alia, European trade mark registration No 8 367 831. The opponent invoked Article 8(1)(b) and 8(5) 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 trade mark registration No 8 367 831.

1. The goods and services

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

Class 9: Protective eye pieces; safety helmets; clothing, headgear and footwear for protection against accident, irradiation or fire; glasses and goggles for shooting, skiing and other sports; wet suits for diving; sports headgear; helmets.

Class 12: Land, water and air vehicles; apparatus for locomotion by land, air or water; engines; remote control land, rail, water and air vehicles; carpets adapted (shaped) for land, rail, water and air vehicles; parts and fittings for the aforesaid.

Class 25: Clothing, footwear, headgear; warm-up suits, blouses, slacks, caps, hosiery, scarves, ties, gloves, sweaters, jackets, parkas, bibs, coveralls, pants, shoes, golf shoes, boots, shirts, vests, coats and special-purpose clothing not covered by other classes; sports clothing, including snowboarding clothing; ear muffs; golf hats; protective clothing (not included in other classes); visors; wet suits for surface watersports; wet suits for use whilst water skiing, windsurfing or wakeboarding, swimming suits; parts and fittings for the aforesaid goods.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; toys, toy land, water or air vehicles; models; ski bags; remote controlled toys in the form of land, rail, air and water vehicles; sports equipment not covered in other classes (including gloves used for games and sports).

Class 35: retail services connected with the sale of land, water and air vehicles; apparatus for locomotion by land, air or water; engines; clothing, footwear, headwear, toys and games, sports equipment.

The contested goods are the following:

Class  9: Protective helmets for sports; Sport bags adapted [shaped] to contain protective helmets; Protective headgear for the prevention of accident or injury; Safety helmets; Headwear for sporting activities for protection against injury; Riding helmets; Helmets for bicycles; Helmets for use in sports; Head guards for sports; Skull guards for protection against injury; Sports eyewear; Snow goggles; Sports glasses; Safety glasses for protecting the eyes; Anti-glare visors; Protective visors.

Class 25: Caps [headwear]; Berets; Bobble hats; Caps with visors; Ski hats; Knitted caps; Sports caps; Skull caps; Woolly hats; Snow boots; Thermally insulated clothing; Weather resistant outer clothing; Rainproof clothing; Clothing for skiing.

Class 28: Sporting articles and equipment; Sporting articles not included in other classes.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of goods and services.

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 Protective helmets for sports; Protective headgear for the prevention of accident or injury; Safety helmets; Headwear for sporting activities for protection against injury; Riding helmets; Helmets for bicycles; Helmets for use in sports; Head guards for sports; Skull guards for protection against injury; are included in the broad category of opponent’s clothing, headgear and footwear for protection against accident, irradiation or fire. Therefore, they are identical.

The contested Sports eyewear; Snow goggles; Sports glasses; Safety glasses for protecting the eyes; Anti-glare visors; Protective visors are included in the broad category of opponent’s protective eye pieces. Therefore, they are identical.

The contested Sport bags adapted [shaped] to contain protective helmets are items to protect the safety gear against scratches, falls, etc. The purpose and nature of these goods are different from those of protective helmets themselves. However, undertakings that manufacture headgear for protection against accidents may also manufacture this kind of sport bags adapted [shaped] to contain protective helmets. In any event, in many cases such helmets are already sold with these protective sport bags. In such cases the distribution channels and the end users can be the same. Furthermore, the sport bags and the helmets are used in combination, although not strictly complementary. Therefore, there is a low degree of similarity between Sport bags adapted [shaped] to contain protective helmets and the opponent’s safety helmets.

Contested goods in Class 25

The contested Caps [headwear]; Berets; Bobble hats; Caps with visors; Ski hats; Knitted caps; Sports caps; Skull caps; Woolly hats; Snow boots are included in the broad category of opponent’s footwear, headgear. Therefore, they are identical.

The contested Thermally insulated clothing; Weather resistant outer clothing; Rainproof clothing; Clothing for skiing are included in the broad category of opponent’s Clothing. Therefore, they are identical.

Contested goods in Class 28

The contested Sporting articles and equipment; Sporting articles not included in other classes are identically contained in both lists of goods (including synonyms). 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 are directed at the public at large. The degree of attention may vary from average to high regarding those goods as for instance snow googles are current and non-expensive products whereas safety helmets are very important to protect the human skull during potentially dangerous sports and therefore will certainly be chosen paying a lot of attention to the features of such goods.

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 earlier mark is a figurative mark of extended wings with a rectangular empty box placed in the centre of the wings. This box is ’framed’ in a half circle formed by a black line. The graphic design elements of many fine black pencil strokes create furthermore the impression of feathers forming the wings.

The contested sign is a figurative mark consisting of grey extended wings with an oval shaped black box in the centre of the wings. In this box, the capital letters HMR are placed, whereby the right leg of the letter H and the left leg of the letter R merge with the left and right leg of the letter M. This box is ’framed’ in a half circle formed by a black line. The graphic design elements of many fine black pencil strokes create furthermore the impression of feathers forming the wings. In the application, it is claimed that the sign consists of a further verbal element, namely the word HELMETS. However, this word is illegible in the representation of the contested sign. Therefore, it will not be taken into consideration in the comparison of signs.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

As regards the contested sign, it is composed of distinctive verbal element ‘HMR’ and figurative element of equal distinctive character.

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

The element ‘feathered wing device’ in the contested sign is the dominant element as it is the most eye-catching by virtue of its size. The figurative element is the visually dominant element of the contested trade mark.

Visually, the signs coincide in the ‘extended feathered wings‘ device which contains in its centre a box. However, they differ in the letters ‘HMR’ which are contained in the centre box of the contested sign. Furthermore, the contested sign is depicted in grey and black, whereas the earlier right is black and white.

In the case at hand, the dominant element of the contested sign is the feathered wing device with a centre box, and the earlier right consists of basically the identical structure and design. The proportions and the outline of the wings and the box in the centre are also very similar. The letters ‘HMR’ on the contrary are small and might retain the consumer’s attention only after a second look. Therefore, the Opposition Division concludes that the signs are similar at least to an average degree.

Concerning the aural comparison, the earlier right is a figurative mark without any verbal elements. Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, both signs will most likely be perceived as the wings of soaring birds since both of the signs contain a depiction of feathered wing elements. The letters of the contested sign will be perceived as such, namely the letters HMR which however don’t convey a particular meaning. As both signs will be associated with a similar meaning, namely the wings of a soaring bird, the signs are conceptually highly similar.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness or even reputation, but did not file any evidence in order to prove such a claim.

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. Furthermore, the applicant did not adduce any evidence that the wing device would be common or ordinary. 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 are partially identical and partially similar to a low degree. The signs are visually and conceptually similar on account of their common feathered wing device with a box element in their centre, which is the only element of the earlier right and the dominant element of the contested sign.

The differences between the signs are reduced to the letters HMR and the different colours, namely black and white and black and grey. The letters HMR are of a relatively small size compared to the dominant feathered wing element, and the grey and black design does not differ significantly from the black and white design. Such elements will not be perceived as particularly relevant information on the commercial origin of the goods by the relevant public. Therefore, in the Opposition Division’s view, those differences are not sufficient to dispel the likelihood that the relevant public may perceive the marks as variants of each other used by the same or economically linked undertakings.

All the aforementioned findings lead to the conclusion that for all the relevant goods, the coincidences in the overall impression produced by the trade marks outweigh the differences.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Considering that average consumers rarely have the chance to make a direct comparison between different marks but must trust in their imperfect recollection of them, they may legitimately believe that the contested trade mark is a new version or a brand variation of the earlier figurative mark. Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, even considering that the degree of attention with regard to some of the relevant goods may be higher than average.

This finding is true even for the goods that are similar to only a low degree since the impact of the differences between the signs is not sufficient to overcome the similarity between them. The similarity between the signs, due to their common dominant and distinctive feathered wing element, outweighs the low degree of similarity between some of the goods. Considering all the above, there is a likelihood of confusion on the part of the public also for these goods.

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 8 367 831. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European trade mark registration No 8 367 831 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Likewise, 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 ground of the opposition, namely Article 8(5) EUTMR.

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

Plamen IVANOV

Karin KLÜPFEL

Ana MUÑIZ RODRÍGUEZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.