CANCELLATION No 21 002 C (INVALIDITY)

W & W Cycles AG, Ohmstr 2, 97076 Würzburg, Germany (applicant), represented by Intellectual Property IP-GÖTZ Patent- und Rechtsanwälte, Postfach 35‑45, 90017 Nuremberg, Germany (professional representative)

a g a i n s t

Baja Food Industries Co., P.O. Box 18994, Riyadh 11425, Saudi Arabia (EUTM proprietor), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío 4, 28010 Madrid, Spain (professional representative).

On 07/08/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against some of the services of European Union trade mark No 14 972 418 (figurative mark), namely against some of the services in Class 35. The application is based on European Union trade mark No 11 817 046 (figurative mark). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that due to the high degree of similarity between the signs and the similarity between the services, a likelihood of confusion exists.

The EUTM proprietor argues that the marks under comparison are dissimilar. Since a similarity between marks is one of the conditions for finding a likelihood of confusion, this cannot be found in the present case.

The applicant did not reply to the EUTM proprietor’s observations.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 services

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.

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

Class 12: Motorcycles; motorcycle parts, included in Class 12; tyres of motorcycle; motorcycle accessories, as far as included in Class 12.

Class 35: Wholesaling and retailing of motorcycles, motorcycle parts, motorcycle tyres and motorcycle accessories.

The contested services are the following:

Class 35: Retail services relating to food; retail services in relation to foodstuffs; retail services in relation to coffee.

Contested services in Class 35

The applicant’s goods in Class 12 (motorcycles; motorcycle parts etc.) are dissimilar to the EUTM proprietor’s services of food retail, in Class 35. Based on the relevant factors, there is no similarity between them. They differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers, and are not likely to come from the same kind of undertakings.

The applicant’s retail services in Class 35 are related to motorcycles and motorcycle goods, while the retail services of the EUTM proprietor in the same class are related to foodstuffs. It is evident that the compared services refer to very different products, namely goods related to foodstuffs versus motorcycle related goods, and consequently the goods to which these services are addressed have a completely different purpose.

The mere act of selling to the end consumer, either directly by the producer or via a wholesaler or retailer, is not a service. Therefore, the nature and purpose of the service must be defined from the standpoint of the end consumer, who is interested in the respective goods. The end consumer will have one, single aim to visit a retail shop, namely to acquire certain goods. The end consumer does not visit retail shops and then ask what goods they offer, but intends to buy specific goods and then visit the respective retail shops where those goods can be expected.

In the present case, the retail services relating to foodstuffs mostly fulfil different consumer needs to the consumer wishing to acquire goods in relation to motorcycles, motorcycle parts and motorcycle tyres. These particular services require a qualified mechanical technician and as such cannot be offered by a foodstuffs supplier or supermarket. Even in large shopping malls, the foodstuffs and coffee section and the automotive / sports section (if there is one) will be separate (19/09/2018 R 223/2018-4, BAJA / BAJA (fig.)).

Motorcycle dealers are not in economic competition with foodstuffs and coffee retailers or supermarkets. Moreover, the retail services under comparison satisfy different shopping needs of the consumers and as such they have different purposes; they target different public and do not coincide in their distribution channels.

It follows that the contested services are dissimilar to the applicant’s goods and services.

Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the application must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Richard BIANCHI

Birgit FILTENBORG

Pierluigi M. VILLANI

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 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.