OPPOSITION No B 2 644 485

Walberg Urban Electrics GmbH, Alter Wandrahm 6, 20457 Hamburg, Germany (opponent), represented by Nesselhauf Rechtsanwälte, Alsterchaussee 40, 20149 Hamburg, Germany (professional representative)

a g a i n s t

Vintive, 12 rue de la Glacière, 75013 Paris, France (applicant).

On 10/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 644 485 is partially upheld, namely for the following contested goods and services:

Class 12: Vehicles and conveyances; parts and fittings for vehicles; vehicles; drone; land vehicles and conveyances; wheeled vehicles; automotive vehicles; electric vehicles; self-propelled electric vehicle; passenger carrying vehicles; electric bicycles; powered vehicles for use on land; electrically powered motor vehicles; scooters [vehicles]; motorized and non-motorized scooters for personal transportation; push scooters [vehicles]; non-motorized scooters [vehicles]; vehicles for travel by land; electrically powered land vehicles; vehicles for travel by air; powered vehicles for use in the air; remote controlled flying objects.

Class 35: Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; On-line trading services in which seller posts products to be auctioned and bidding is done via the Internet; auctioning of vehicles; wholesale services in relation to vehicles; retail services in relation to vehicles.

2. European Union trade mark application No 14 967 319 is rejected for all the above goods and services. It may proceed for the remaining services namely for:

Class 35: Advertising, marketing and promotional services; commercial trading and consumer information services; provision of assistance [business] in the establishment of franchises; provision of assistance [business] in the operation of franchises; advisory services (business -) relating to the establishment of franchises; provision of business information relating to franchising; services rendered by a franchisor, namely, assistance in the running or management of industrial or commercial enterprises; trade promotional services; advertising services for the promotion of e-commerce; arranging of competitions for advertising purposes; electronic billboard advertising; advertising services relating to the sale of motor vehicles; publicity and sales promotion services; advertising services relating to the sale of personal property; distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; promoting the sale of the services [on behalf of others] by arranging advertisements; publicity columns preparation; rental of advertising space on-line; advertising by transmission of on-line publicity for third parties through electronic communications networks.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 967 319, namely all the goods and services in Classes 12 and 35. The opposition is based on European Union trade mark registration No 13 105 309. The opponent invoked Article 8(1)(b) 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 and services on which the opposition is based are the following:

Class 12: Electrically operated two-wheeled vehicles, in particular electric motor scooters, Electrically operated scooters, Electric bicycles and Electric kickboards; Apparatus for locomotion by land, air or water, parts and fittings for all of the aforesaid goods, included in this class, other than tyres, solid rubber tyres, inner tubes for tyres.

Class 35: Retailing and wholesaling, including via the internet, in the fields of protective helmets, electric lamps, electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards, fittings and parts for electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards, electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards, in particular helmets, luggage, bags, wallets and other carrying cases, leather and imitations of leather, clothing, protective clothing, in particular vests, head guards, elbow guards, knee guards, shin guards, footwear, headgear, belts, replacement and wear parts for electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards, in particular batteries and spare tyres, non-electric kickboards and stunt scooters.

The contested goods and services are the following:

Class 12: Vehicles and conveyances; parts and fittings for vehicles; vehicles; drone; land vehicles and conveyances; wheeled vehicles; automotive vehicles; electric vehicles; self-propelled electric vehicle; passenger carrying vehicles; electric bicycles; powered vehicles for use on land; electrically powered motor vehicles; scooters [vehicles]; motorized and non-motorized scooters for personal transportation; push scooters [vehicles]; non-motorized scooters [vehicles]; vehicles for travel by land; electrically powered land vehicles; vehicles for travel by air; powered vehicles for use in the air; remote controlled flying objects.

Class 35: Advertising, marketing and promotional services; commercial trading and consumer information services; provision of assistance [business] in the establishment of franchises; provision of assistance [business] in the operation of franchises; advisory services (business -) relating to the establishment of franchises; provision of business information relating to franchising; services rendered by a franchisor, namely, assistance in the running or management of industrial or commercial enterprises; trade promotional services; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; on-line trading services in which seller posts products to be auctioned and bidding is done via the Internet; advertising services for the promotion of e-commerce; arranging of competitions for advertising purposes; electronic billboard advertising; auctioning of vehicles; wholesale services in relation to vehicles; retail services in relation to vehicles; advertising services relating to the sale of motor vehicles; publicity and sales promotion services; advertising services relating to the sale of personal property; distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; promoting the sale of the services [on behalf of others] by arranging advertisements; publicity columns preparation; rental of advertising space on-line; advertising by transmission of on-line publicity for third parties through electronic communications networks.

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 ‘in particular’, used in the opponent’s list 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).

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

The contested vehicles and conveyances; parts and fittings for vehicles; vehicles; drone; land vehicles and conveyances; wheeled vehicles; automotive vehicles; electric vehicles; self-propelled electric vehicle; passenger carrying vehicles; electric bicycles; powered vehicles for use on land; electrically powered motor vehicles; scooters [vehicles]; motorized and non-motorized scooters for personal transportation; push scooters [vehicles]; non-motorized scooters [vehicles]; vehicles for travel by land; electrically powered land vehicles; vehicles for travel by air; powered vehicles for use in the air; remote controlled flying objects are included in the broad category of the opponent’s apparatus for locomotion by land, air or water, parts and fittings for all of the aforesaid goods, included in this class. Therefore, they are identical.

Contested service in Class 35

The contested electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; retail services in relation to vehicles include, as broader categories, or overlap with, the opponent’s retailing and wholesaling, including via the internet, in the fields of protective helmets, electric lamps, electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards, fittings and parts for electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards, electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards, in particular helmets, luggage, bags, wallets and other carrying cases, leather and imitations of leather, clothing, protective clothing, in particular vests, head guards, elbow guards, knee guards, shin guards, footwear, headgear, belts, replacement and wear parts for electrically operated two-wheeled vehicles, in particular electric motor scooters, electric scooters, electric bicycles and electric kickboards, in particular batteries and spare tyres, non-electric kickboards and stunt scooters. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested on-line trading services in which seller posts products to be auctioned and bidding is done via the Internet; wholesale services in relation to vehicles; auctioning of vehicles are public sales in which property or items of merchandise are sold to the highest bidder. These services are in competition with the opponent’s retailing, including via the internet, in the fields of electrically operated two-wheeled vehicles, since they could target the same public, have the same purpose and could have the same providers. Therefore, the services are considered similar.

The contested advertising, marketing and promotional services; commercial trading and consumer information services; advertising services for the promotion of e-commerce; arranging of competitions for advertising purposes; electronic billboard advertising; advertising services relating to the sale of motor vehicles; publicity and sales promotion services; advertising services relating to the sale of personal property; distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; promoting the sale of the services [on behalf of others] by arranging advertisements; publicity columns preparation; rental of advertising space on-line; advertising by transmission of on-line publicity for third parties through electronic communications networks are all services included in advertising services. Advertising services consist 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. These services are 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. They do not have the same nature as the contested goods and services, they are neither complementary nor in competition and they do not serve the same purpose. Therefore, the services are dissimilar to all the contested goods and services.

The contested provision of assistance [business] in the establishment of franchises; provision of assistance [business] in the operation of franchises; advisory services (business -) relating to the establishment of franchises; provision of business information relating to franchising; services rendered by a franchisor, namely, assistance in the running or management of industrial or commercial enterprises; trade promotional services are all services included in business management. Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. They do not have the same nature as the contested goods and services, they are neither complementary nor in completion and they do not serve the same purpose. Therefore, the services are dissimilar to all the contested goods and services.

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 are directed at the public at large. The goods and services at issue are specialised goods and services directed at average customers.

Taking into consideration the price of cars, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T‑63/09, Swift GTi, EU:T:2012:137, § 39-42).

This same consideration must be assumed when considering vehicles in general. For the same reasons, consumers are likely to pay a higher than average degree of attention when purchasing, inter alia, electric bicycles or non-motorized scooters, just as they are when purchasing a car or electrically powered land vehicles. The consumer will be an informed one.

3. The signs

The Urban	URBAN360
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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). This applies by analogy to international registrations designating the European Union. 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 Greek- and Estonian-speaking parts of the relevant public.

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 contested sign has no elements which could be considered clearly more distinctive or dominant (visually eye-catching) than other elements. In particular, the degree of distinctiveness of the number ‘360’, which could be understood as an indication of a complete circle, may be not be the same as in the case of goods that function in 360 degrees, for example a camera that can take a photograph of a complete circle. However, in the present case, for the goods such as vehicles in Class 12 and services such as retail and wholesale in Class 35, the number ‘360’ in the contested sign will be considered distinctive even when it is perceived as a full circle. The same is true of the word ‘URBAN’, which has no meaning in the relevant territories. In the earlier sign, the word ‘URBAN’ will be the more distinctive and dominant element. The word ‘THE’ in the earlier mark will only denote what follows, since it is a common English word that will be understood as the definite article.

Visually and aurally, the signs coincide in the word ‘URBAN’. They differ in the appearance and pronunciation of the additional numerical element ‘360’ in the earlier mark and the word ‘THE’ in the contested sign. Although these elements have a certain degree of distinctiveness, as stated above, ‘360’ more than the word ‘THE’, and, therefore, will have an impact on consumers’ visual and aural perception of the marks, this does not alter the fact that the word ‘URBAN’ has an independent distinctive character in both signs.

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

Conceptually, neither of the signs, as a whole, has a meaning for the public in the relevant territories. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. Although the number ‘360’ in the contested sign would be understood as meaning a full circle, it has no counterpart in the earlier mark. Consequently, the marks have no concept in common.

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 goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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).

The goods are partly identical, partly similar and partly dissimilar. The earlier mark has a normal degree of distinctiveness and the degree of attention of the public is higher than average.

The signs are visually and aurally similar to the extent that they contain the word ‘URBAN’, which is an independent and distinctive part of the earlier mark and the first verbal element in the contested sign.

As explained in section c) above, the differing elements in the signs, namely the word ‘THE’ in the earlier mark and the number ‘360’ in the contested sign, either occupy a secondary position, being read and pronounced last, in the case of the number ‘360’, or have less impact than the verbal element that accompanies it, in the case of the word ‘THE’. These differences per se are not sufficient to counteract the commonalities between the marks, and are insufficient to exclude a likelihood of confusion for similar or identical goods.

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).

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.

Based on the principle of imperfect recollection, it is considered that the similarities between the signs are sufficient to make at least part of the public believe that the similar or identical goods come from the same undertaking or economically linked undertakings. Considering all of the above, there is a likelihood of confusion on the part of the Estonian- and Greek-speaking parts of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As 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.

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin EBERL

Magnus ABRAMSSON

Swetlana BRAUN

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.