OPPOSITION No B 2 738 154

Velo Enterprise Co., Ltd., No. 1012, Sec. 1, Jhongshan Rd., Dajia Dist., Taichung City, Taiwan (opponent), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain (professional representative)

a g a i n s t

Velo Europe S.r.l., Via Piemonte 1/C, Busnago, Italy (applicant), represented by Viviana Carini, Corso Cristoforo Colombo 10, 20144 Milan, Italy (professional representative).

On 30/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 738 154 is partially upheld, namely for the following contested goods and services:

Class 9: Sunglasses; cyclists' helmets; gloves, hats and protective goggles for cycling.

Class 12: Bicycles, electric bicycles and bicycle components, including inner tubes, bicycle tyres, bicycle rims, quick-release devices for bicycle wheels; cycle hubs; spokes for bicycles, cycles; bicycle forks; groups of brakes for bicycles; cranks for bicycles; cranks for bicycles; chains (cycle- ); bicycle chain guards; bicycle chain rings; pedals for cycles; bicycle seat posts; handlebars for bicycles; extensions for bicycle handlebars; stems for bicycles; headset bearings for bicycles; speed changes for bicycles: derailleurs; chainwheels for bicycles; central axial movements for bicycles; bicycle axles; journal bearings for bicycles; saddles; coatings saddles; brakes for bicycles, cycles; brake levers for bicycles; gear shifts; baskets and bottle cages; bicycle repair kits; child's seats; electric motors for bicycles.

Class 35: Sales services, including on-line sales, of bicycles, electrical bicycles and bicycle components including tubes for wheels, bicycle tires, rims for bicycles, quick-release devices for bicycle wheels, hubs for bicycles, spokes of wheels of bicycles, bicycle forks, groups of brakes for bicycles, cranks for bicycles, cranks for bicycles, chains for bicycles, bicycle chain guard, rings for chains for bicycles, pedals for bicycles; sales services, including on-line sales, of seats posts for bicycles, handlebars for bicycles, extensions to handlebars for bicycles, stems for bicycles, bearings for regulators steering bicycle, speed changes for bicycles, derailleurs, toothed wheels for bicycles, central axial movements for bicycles, axles for bicycles, journal bearing for bicycles, saddles, coatings saddles; sale, including online, of frames, brakes for bicycles, bicycle brake lever grips, gear levers, baskets and bottle racks, bicycle repair kits, seats, electric motors for bicycles; sale, including online, of protective clothing for cycling, sunglasses, cyclists' helmets, gloves, hats and protective goggles for cycling.

2. European Union trade mark application No 14 812 416 is rejected for all the above goods and services. It may proceed for the remaining services, namely organising trade fairs; advertising in Class 35.

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 14 812 416. The opposition is based on European Union trade mark registration No 4 617 941. The opponent invoked Article 8(1)(b) and Article 8(3) 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.

1. The goods and services

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

Class 9: Safety products, namely, reflective safety bands to be worn on the body; bicycle safety apparel; bicycle protective gloves, caps, and glasses; bicycle helmets; sport goggles for use in bicycling.

Class 12: Bicycle accessories and components, including, saddles, saddle covers, frame pads, grips and handle bars.

The contested goods and services are the following:

Class 9: Sunglasses; cyclists' helmets; gloves, hats and protective goggles for cycling.

Class 12: Bicycles, electric bicycles and bicycle components, including inner tubes, bicycle tyres, bicycle rims, quick-release devices for bicycle wheels; cycle hubs; spokes for bicycles, cycles; bicycle forks; groups of brakes for bicycles; cranks for bicycles; cranks for bicycles; chains (cycle- ); bicycle chain guards; bicycle chain rings; pedals for cycles; bicycle seat posts; handlebars for bicycles; extensions for bicycle handlebars; stems for bicycles; headset bearings for bicycles; speed changes for bicycles: derailleurs; chainwheels for bicycles; central axial movements for bicycles; bicycle axles; journal bearings for bicycles; saddles; coatings saddles; brakes for bicycles, cycles; brake levers for bicycles; gear shifts; baskets and bottle cages; bicycle repair kits; child's seats; electric motors for bicycles.

Class 35: Sales services, including on-line sales, of bicycles, electrical bicycles and bicycle components including tubes for wheels, bicycle tires, rims for bicycles, quick-release devices for bicycle wheels, hubs for bicycles, spokes of wheels of bicycles, bicycle forks, groups of brakes for bicycles, cranks for bicycles, cranks for bicycles, chains for bicycles, bicycle chain guard, rings for chains for bicycles, pedals for bicycles; sales services, including on-line sales, of seats posts for bicycles, handlebars for bicycles, extensions to handlebars for bicycles, stems for bicycles, bearings for regulators steering bicycle, speed changes for bicycles, derailleurs, toothed wheels for bicycles, central axial movements for bicycles, axles for bicycles, journal bearing for bicycles, saddles, coatings saddles; sale, including online, of frames, brakes for bicycles, bicycle brake lever grips, gear levers, baskets and bottle racks, bicycle repair kits, seats, electric motors for bicycles; sale, including online, of protective clothing for cycling, sunglasses, cyclists' helmets, gloves, hats and protective goggles for cycling; organising trade fairs; advertising.

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

The term ‘including’, used in both lists of goods and services, indicates that the specific goods and services 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).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 cyclists' helmets and protective goggles for cycling are contained in the list of goods of the earlier trade mark (including synonyms and slightly different wording). Therefore, these goods are identical.

The contested gloves for cycling and hats for cycling include, as broader categories, the opponent’s bicycle protective gloves and bicycle protective caps. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested sunglasses refer to a broad category of optical instruments used, inter alia, for protecting eyes from sunlight/glare when practising certain sports, for example cycling. To this extent, they overlap with the opponent’s bicycle protective glasses. Therefore, these goods are identical.

Contested goods in Class 12

The contested bicycle components, including inner tubes, bicycle tyres, bicycle rims, quick-release devices for bicycle wheels; cycle hubs; spokes for bicycles, cycles; bicycle forks; groups of brakes for bicycles; cranks for bicycles [mentioned twice]; chains (cycle- ); bicycle chain guards; bicycle chain rings; pedals for cycles; bicycle seat posts; handlebars for bicycles; extensions for bicycle handlebars; stems for bicycles; headset bearings for bicycles; speed changes for bicycles: derailleurs; chainwheels for bicycles; central axial movements for bicycles; bicycle axles; journal bearings for bicycles; saddles; coatings saddles; brakes for bicycles, cycles; brake levers for bicycles; baskets and bottle cages; bicycle repair kits; electric motors for bicycles are all different parts and equipment for bicycles. They are included in the broad category of the opponent’s bicycle accessories and components and are, therefore, identical. This conclusion is equally applicable to the contested gear shifts and child's seats due to the overlap with the same goods from the earlier mark.

The contested bicycles, electric bicycles and the opponent’s bicycle accessories and components are likely to have the same producers and they may target the same relevant public. Moreover, they are complementary and may be distributed through the same channels. Therefore, these goods are similar.

Contested services in Class 35

According to the established case law retail and wholesale services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/10/2011, T‑421/10, Rosalia de Castro, EU:T:2011:565, § 33). The goods covered by the retail and wholesale services and the specific goods covered by the other mark have to be identical for similarity to be found, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

In the present case, following the previous comparison of the conflicting goods in Classes 9 and 12, it is considered that bicycle components including tubes for wheels, bicycle tires, rims for bicycles, quick-release devices for bicycle wheels, hubs for bicycles, spokes of wheels of bicycles, bicycle forks, groups of brakes for bicycles, cranks for bicycles [mentioned twice], chains for bicycles, bicycle chain guard, rings for chains for bicycles, pedals for bicycles; seats posts for bicycles, handlebars for bicycles, extensions to handlebars for bicycles, stems for bicycles, bearings for regulators steering bicycle, speed changes for bicycles, derailleurs, toothed wheels for bicycles, central axial movements for bicycles, axles for bicycles, journal bearing for bicycles, saddles, coatings saddles; frames, brakes for bicycles, bicycle brake lever grips, gear levers, baskets and bottle racks, bicycle repair kits, seats, electric motors for bicycles are all identical to the opponent’s bicycle accessories and components in Class 12 and protective clothing for cycling (synonymous to the opponent’s bicycle safety apparel), sunglasses, cyclists' helmets, gloves, hats and protective goggles for cycling are all identical to the opponent’s bicycle safety apparel; bicycle protective gloves, caps, and glasses; bicycle helmets in Class 9.

Consequently, the contested sales services of the goods mentioned above are all similar to a low degree to the opponent’s goods in Classes 9 and 12. Although the nature, purpose and method of use of these goods and services are not the same, they display similarities, as they are complementary and the services are generally offered through the same distribution channels as the goods. Furthermore, they target the same public.

However, the contested sales services, including on-line sales, of bicycles, electrical bicycles and the opponent’s goods in Classes 9 and 12 are not similar. As pointed out above, similarity between retail and wholesale services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail and wholesale services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only similar.

The contested advertising consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. This service is provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some of the opponent’s goods may appear in advertisements provided by the applicant is insufficient for finding similarity. The same findings are applicable to the contested organising trade fairs which consists of organising venues for promotional purposes. Therefore, the contested organising trade fairs; advertising are dissimilar to the opponent’s goods in Classes 9 and 12.

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 different degrees) are directed at the public at large and professionals such as those in cycling.

The degree of attention may vary from average to high, considering the nature of the relevant goods (i.e. parts for bicycles, which may be selected and purchased with a higher degree of care and attention on account of security features or technical characteristics) and their price.

3. The signs

	PROLOGO ZERO
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 word ‘PROLOGO’ included in both signs, although being an Italian term, is likely to be understood by the vast majority of the public in the relevant territory as ‘a separate introductory section of a literary, dramatic, or musical work’ (information extracted from Oxford Dictionaries online at https://en.oxforddictionaries.com/definition/prologue). Professional part of the relevant public may understand this word as ‘a short preliminary time trial held before a race to establish a leader’ (information extracted from Oxford Dictionaries online at https://en.oxforddictionaries.com/definition/prologue). This is because the word ‘PROLOGO’ has very similar equivalents with the same meanings in many languages of the European Union, for instance ‘prologue’ (in English and French), ‘prólogo’ (in Portuguese and Spanish), ‘prolog’ (in Croatian, Czech, Danish, German, Polish, Swedish), ‘proloog’ (in Dutch and Estonian), ‘prológus’ (in Hungarian), ‘prologs’ (in Latvian), ‘prologas’ (in Lithuanian) and ‘prológ’ (in Slovak). Given that the word ‘PROLOGO’ is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive to an average degree.

The word ‘ZERO’ of the contested sign is a very basic English term which refers to a cardinal number ‘0’ (information extracted from Oxford Dictionaries online at https://en.oxforddictionaries.com/definition/zero). It is considered to be understood in all of the Member States of the European Union because it is used internationally. In addition, identical or highly similar equivalents are used to refer to the numeral ‘0’ in several other widely spoken languages of the European Union, for example ‘cero’ (in Spanish), ‘zéro’ (in French) and ‘zero’ (in Italian, Polish, Portuguese and Romanian). Furthermore, as established by the Court on various occasions, the average consumer in the European Union as a whole would understand certain English words (21/01/2010, T-309/08, G Stor, EU:T:2010:22, § 32; 16/01/2008, T-112/06, Idea, EU:T:2008:10, § 69; 03/03/2004, T-355/02, Zirh, EU:T:2004:62, § 46). In the present case, ‘zero’ is deemed to be such a common word. As regards the distinctiveness of the word ‘ZERO’, it does not directly describe or allude to any characteristics of the relevant goods and services in a manner that could affect its distinctiveness in a material way. Therefore, it is distinctive to an average degree.

Visually and aurally, the signs coincide in the word/sound ‘PROLOGO’. However, they differ in the additional word/sound ‘ZERO’ of the contested sign.

Visually, the signs also differ in the stylisation of the earlier mark. However, this stylisation is not considered particularly overwhelming and it will not distract the consumer’s attention from the word it embellishes.

It is important to note that the earlier mark’s verbal element is also represented at the beginning of the contested sign. 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 signs are visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks’ individual elements.

As the signs will be associated with similar meanings by a substantial part of the public in the relevant territory, due to the coincidence in the concept(s) conveyed by the verbal element ‘PROLOGO’, they are conceptually similar to at least an average degree.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the relevant goods 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

As concluded above, the goods and services are partly identical, partly similar (to different degrees) and partly dissimilar. Those found to be identical or similar (to different degrees) target the public at large and professionals with a degree of attention that varies from average to high. The earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods.

The signs in dispute are similar to at least an average degree on all levels (visual, aural and conceptual), as explained in detail above in section c) of this decision. This is, in particular, justified by the fact that the only verbal element of the earlier mark, ‘PROLOGO’, plays an independent and distinctive role at the beginning of the contested sign, where the consumer’s attention is generally focused. The differences between the signs, as indicated above, are not sufficient to counteract their similarities, also for the following reasons.

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 and services covered are from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations to their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable, image.

In the present case, although the public in the relevant territory might detect certain differences between the signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way depending on the type of goods and services that it designates. It is, therefore, conceivable that the relevant public will regard the goods and services designated by the conflicting signs as belonging to two ranges of goods and services coming from the same undertaking under the ‘PROLOGO’ brand.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the public in the relevant territory and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 4 617 941.

It follows from the above that the contested sign must be rejected for all the contested goods and services found to be identical or similar (to different degrees) to those of the earlier trade mark, even for the contested services that are similar only to a low degree to the opponent’s goods. This is because, bearing in mind the interdependence principle mentioned above, the moderate degree of similarity between those goods and services is clearly offset by, at least, an average degree of similarity between the signs.

The rest of the contested services in Class 35, namely sales services, including on-line sales, of bicycles, electrical bicycles; organising trade fairs; advertising, are dissimilar to the opponent’s goods in Classes 9 and 12. As the 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 services cannot be successful.

In view of the foregoing, the Opposition Division will now proceed with the examination under Article 8(3) EUTMR.

UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER – ARTICLE 8(3) EUTMR

According to Article 8(3) EUTMR, upon opposition by the proprietor of the trade mark, a trade mark will not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

Therefore, the grounds for refusal of Article 8(3) EUTMR are subject to the following requirements:

• the signs are identical or only differ in elements which do not substantially affect their distinctiveness;

• the goods and services are identical or equivalent in commercial terms;

• the applicant is an agent or representative of the owner of the earlier mark;

• the application was filed without the consent of the owner of the earlier mark;

• the agent or representative fails to justify its acts.

These conditions are cumulative. Therefore, where one of the conditions is not satisfied, the opposition based on Article 8(3) EUTMR cannot succeed.

1. The signs

	PROLOGO ZERO
Earlier trade mark	Contested sign

It is important to note that in order to protect the legitimate proprietor against unfair practices by its representatives, a restrictive interpretation of Article 8(3) EUTMR should be avoided. As such Article 8(3) EUTMR also extends to similar trade marks (13/04/2011, T-262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 61).

Reference is made to the previous comparison of signs. The Opposition Division is of the opinion that the presence of the word ‘ZERO’ in the contested sign does not have a significant impact on the distinctiveness of the sign since this element is in a secondary position and does not attract the consumer’s attention as much as the first coinciding element ‘PROLOGO’. As regards the different typeface used in the earlier mark, this will not distract the consumer’s attention from the word it embellishes, as already outlined above.

Taking all the above into account, even though the conflicting signs are not identical, they only differ in elements which do not substantially affect their distinctiveness and as previously found, are similar overall.

2. The goods and services

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

Class 9: Safety products, namely, reflective safety bands to be worn on the body; bicycle safety apparel; bicycle protective gloves, caps, and glasses; bicycle helmets; sport goggles for use in bicycling.

Class 12: Bicycle accessories and components, including, saddles, saddle covers, frame pads, grips and handle bars.

The contested services for which the opposition has not already been upheld under Article 8(1)(b) EUTMR, are the following:

Class 35: Sales services, including on-line sales, of bicycles, electrical bicycles; organising trade fairs; advertising.

As was explained above and for the reasons already provided, these services are dissimilar to the opponent’s goods. It follows that the services are not identical.

Article 8(3) EUTMR must be applied not only where the respective marks are identical, but also when the goods and services in conflict are closely related or equivalent in commercial terms. In other words, what finally counts is that the goods or services of the applicant may be perceived by the public as ‘authorised’ products, the quality of which is still somehow ‘guaranteed’ by the opponent, and which it would have been reasonable for the opponent to market in view of the goods and services protected under the earlier mark. If the goods or services, however, are not identical or similar or equivalent, Article 8(3) EUTMR does not apply (17/02/2014, R 407/2013-4, WOUXUN / WOUXUN).

Therefore, it remains to be examined whether the contested services that have been found to be dissimilar could be ‘closely related or equivalent in commercial terms’ to the opponent’s goods.

Goods and services are equivalent in commercial terms if, inter alia, they can generally be expected to be offered by the same undertaking.

The earlier mark covers goods which are, in essence, protective equipment for cyclists (goods in Class 9) or parts and accessories for bicycles (goods in Class 12). The contested services in Class 35 relate either to selling of bicycles or to support other businesses by promoting their goods and services.

It follows from the above that some of the contested services, namely sales services, including on-line sales, of bicycles, electrical bicycles, are directed at the same relevant public as the opponent’s goods, i.e. cyclists. These goods and services might be offered through the same distribution channels, for example bike stores, and, furthermore, the contested services may be complementary to some of the opponent’s goods, especially those in Class 12. In addition, when buying bicycles consumers are generally offered the opportunity to customise their bike, by adding, removing or changing its individual parts or accessories. It can be, therefore, reasonably assumed that the opponent would also offer the above contested services in view of the goods protected under the earlier mark. Taking all the above into account it is considered that the contested services sales services, including on-line sales, of bicycles, electrical bicycles in Class 35 and the opponents goods in Classes 9 and 12 fall within the same segment of commerce and are, therefore, closely related.

However, with respect to the remaining contested services in Class 35, namely organising trade fairs; advertising, from the description of these services given above it is obvious that they have no relevant points in common with the opponent’s goods in Classes 9 and 12. The mere fact that the opponent’s goods might be promoted via these contested services is not sufficient in itself to reach a conclusion that they are closely related or equivalent in commercial terms since there is too much distance between these goods and services. Contrary to the opponent’s argument, the Opposition Division is of the opinion that it is not reasonable to assume that the relevant public will perceive the above applicant’s services as ‘authorised’ by the opponent and, furthermore, these services and the opponent’s goods are unlikely to be produced/provided by the same entities. They are considered, therefore, to be sufficiently different for Article 8(3) EUTMR not to be applied.

As such, the examination will only proceed for the sales services including online sales of bicycles, electrical bicycles.

3. Agent or representative relationship

In its submissions, the opponent claimed that the applicant is its distributor for the European Union. In order to prove this relationship, it submitted the following evidence:

• ANNEX 2.1: sale records for bicycle parts and gloves sold by the opponent to the applicant from 2009 to 2016. This set of evidence consists of 20 files each containing invoices and packing lists and, furthermore, many files also contain export declarations, purchase orders, bills of lading (or Air waybills if the goods were delivered by air) and certificates of origin, all categorized in chronological sequence. The products sold to the applicant bear the mark ‘PROLOGO’ and include, inter alia, bicycle saddles, grip tape and utilities products (U-case, U-bag, U-light and U-clip) and gloves. Some of the documents are dated after the filing date of the contested application.

• ANNEX 2.2: sponsorship agreements with four professional cycling teams dated between 2014 and 2015. These agreements relate to the promotion and advertisement of the ‘PROLOGO’ brand in Europe by cooperating with the professional cycling teams. In the sponsorship agreement with Tinkoff Sports A/S of 28/09/2014 it is mentioned that the applicant’s company belongs to Velo Enterprise group (§ 1, last paragraph of the first page). In the agreement with Merida Europe GmbH of 21/05/2015 it is stated that the opponent shall provide MERIDA Team with saddles, leisure wear jackets and grips labelled with the mark ‘PROLOGO’ (§ 1(3), first sentence) and that this material support will be handled by the applicant (§ 1(3), last sentence). This agreement shall have a global validity (§7(1)). Furthermore, on each page of the agreements with Tinkoff Sports A/S, Argon 18 and DEVINCI appears a stamp of the applicant’s company with a signature of a person in charge, accompanied with a handwritten remark ‘approved by’ on the title page of each agreement.

The agent/representative relationship must be established prior to the filing date of the contested EUTM application (EUTMA). In the present case, the filing date of the contested EUTMA is 19/11/2015.

In view of the purpose of the provision of Article 8(3) EUTMR, which is to safeguard the legal interests of trade mark proprietors against the misappropriation of their trade marks by their commercial associates, the terms ‘agent’ and ‘representative’ should be interpreted broadly to cover all kinds of relationships based on any business arrangement (governed by written or oral contract) where one party is representing the interests of another, regardless of the nomen juris of the contractual relationship between the principal-proprietor and the EUTM applicant (13/04/2011, T-262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 64).

Therefore, it is sufficient for the purposes of Article 8(3) EUTMR that there is some agreement of commercial cooperation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the applicant, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the trade mark proprietor. It follows that Article 8(3) EUTMR may also extend, for example, to licensees of the proprietor, or to authorised distributors of the goods for which the mark in question is used.

Nevertheless, some kind of cooperation agreement has to exist between the parties. If the applicant acts completely independently, without having entered into any kind of fiduciary relationship with the proprietor, it cannot be considered an agent within the meaning of Article 8(3) EUTMR (13/04/2011, T-262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 64). Therefore, a mere customer or a client of the proprietor cannot amount to an ‘agent or representative’ for the purposes of Article 8(3) EUTMR, since such persons are under no special obligation of trust to the trade mark proprietor.

The burden of proof regarding the existence of a cooperation relationship lies with the opponent (13/04/2011, T-262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 64 and § 67).

In the present case, the opponent did not submit any written agreement between the applicant and the opponent as regards any type of business relationship between them. However, it is not necessary that the agreement between the parties assumes the form of a written contract. Of course, the existence of a formal agreement between the parties would be of great value in determining exactly what kind of relationship exists between them. But even in cases where a written contract does not exist, it may still be possible to infer the existence of a commercial agreement of the kind required by Article 8(3) EUTMR by reference to indirect indications and evidence, such as the commercial correspondence between the parties, invoices and purchase orders for goods sold to the agent, or credit notes and other banking instruments (always bearing in mind that a mere customer relationship is insufficient for Article 8(3) EUTMR).

The Court also decided that active co-operation between a EUTM applicant and an opponent in the advertising of the product, in order to optimise the marketing thereof, could give rise to the fiduciary relationship required under Article 8(3) EUTMR (09/07/2014, T‑184/12, Heatstrip, EU:T:2014:621).

In the present case, the opponent submitted commercial documents such as invoices, packing lists and purchase orders (Annex 2.1) showing that the applicant purchased bicycle parts and bicycle gloves under the brand ‘PROLOGO’ from the opponent on a regular basis at least since 2009 until 2016. The word mark ‘PROLOGO’ and its figurative version appear clearly within the submitted evidence. The sponsorship agreements concluded between the opponent and professional cycling teams (Annex 2.2) prove that there was also some kind of business cooperation between the opponent and the applicant in the field of promotion of goods offered under the mark ‘PROLOGO’. However, what is of a particular importance is the provision in the agreement with Tinkoff Sports A/S according to which the applicant is a company belonging to Velo Enterprise group (§ 1, last paragraph of the first page). The applicant verified this fact by stamping and signing this agreement (approved by Salvatore Truglio, Amministratore Delegato of the applicant’s company). Lastly, some similarities in the business names of the parties, Velo Enterprise Co., Ltd. (the opponent) and Velo Europe S.r.l. (the applicant), cannot be omitted either as they indicate that the applicant operated under the opponent in the European region. All the above clearly demonstrates that there was more than ordinary seller-customer relationship which existed between the opponent and the applicant before the filling date of the contested application.

Therefore, the Opposition Division finds the submitted evidence enough to conclude that a commercial cooperation relationship existed between the opponent and the applicant in which the applicant acted as a distributor of the opponent’s goods in Europe. There is no room for doubts that that relationship gave rise to a fiduciary relationship that was still present as of the time of or, in the hypothetical best-case scenario for the applicant, shortly prior to the filing date of the contested application. It is considered that it was the cooperation with the opponent that gave the applicant the possibility to get to know and appreciate the value of the mark ‘PROLOGO’ and incited the applicant to subsequently try to register the mark in its own name. The Opposition Division also notes that the relationship between the parties was in respect of the relevant territory, namely the territory of the European Union.

Taking all the above into account, the Opposition Division considers that the applicant acted as a representative (distributor) of the opponent.

4. Application without the consent of the owner of the earlier mark

In the present case, the opponent argued that it has never authorised the applicant to file neither the contested EUTMA nor any other mark containing the word ‘PROLOGO’ and the applicant did not claim that the application was filed with the opponent’s consent. Therefore, in the absence of any indications to the contrary, it must be assumed that the application was filed without the opponent’s consent.

5. Absence of justification on the part of the applicant

In the present case, the applicant did not claim to have valid justification for its acts. Therefore, in the absence of any indications to the contrary, it must be assumed that no valid justification exists.

6. Conclusion

Considering all the above, the Opposition Division finds that the opposition is partly well founded under Article 8(3) EUTMR, insofar as it is directed against the following services:

Class 35: Sales services, including on-line sales, of bicycles, electrical bicycles.

The opposition is not successful insofar as the remaining services in Class 35 are concerned, namely organising trade fairs; advertising.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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

Vanessa PAGE

Martin MITURA

Vita VORONECKAITĖ

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.