OPPOSITION No B 2 882 499

Scorpions Musikproduktions- u. Verlagsgesellschaft mbH, An der Dörbrake 5, 29690 Schwarmstedt, Germany (opponent), represented by Meyer & Partner, Jungfernstieg 38, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Pirelli Tyre S.p.A., Viale Piero e Alberto Pirelli 25, 20126 Milano (MI), Italy (applicant), represented by Porta Checcacci & Associati S.p.A., Via Trebbia 20, 20135 Milano, Italy (professional representative).

On 02/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 882 499 is upheld for all the contested goods, namely

Class 9: Software and applications for mobile devices including software and applications for social networking, receipt and transmission of data related to tyres and parts and accessories of vehicles, shopping, fitness, rental of vehicles, vehicle and transportation reservation and vehicle sharing; electronic, encoded, magnetic and electronic key cards for use with vehicles and in respect of vehicles; telephone apparatus; headphones; digital display, for detecting, storing, reporting, monitoring, uploading and downloading data to the internet, mobile devices, and communication with mobile devices.

2. European Union trade mark application No 15 717 622 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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.

PRELIMINARY REMARK ON THE EARLIER MARK

The mark which was stated in the notice of opposition was EUTMA No 13 720 602. This mark was divided on 18/12/2017 by application from the opponent which was filed on 06/11/2017. As the goods and services on which the opposition was based in Classes 9, 12, 28, 38 and 41 are now part of EUTM No 17 617 648 which was registered on 15/02/2018, the Opposition continues with this mark being the earlier mark in the current proceedings. Thus, the comments of the applicant that EUTMA No 13 720 602 only is applied for goods in Class 25 are irrelevant for the proceedings at hand.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 717 622 (word mark ‘SCORPION’), namely against some of the goods in Class 9. The opposition is based on European Union trade mark registration No 17 617 648 (word mark ‘SCORPIONS’). The opponent invoked Article 8(1)(a) and (b), Article 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.

1. The goods and services

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

Class 9: Protective clothing for motorcyclists and cyclists, sunglasses, protective helmets, recorded data carriers, technical stage equipment, namely lighting apparatus, scenery, light, audio, movement and effect apparatus, electroacoustic apparatus and instruments, loudspeakers, headphones, microphones, amplifiers and mixing desks, monitors, computer software, electronic databases, diving equipment.

Class 12: Vehicles for use on land, air vehicles, water vehicles, cars, bicycles, motorbikes, parts and fittings for vehicles, baby carriages, campervans; excluding tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels, vehicle wheels, rims for vehicle wheels.

Class 28: Games and playthings, other than toy and model replicas of land, water and air vehicles, with and without remote control, and accessories therefor; gymnastic and sporting articles not included in other classes; other than fishing requisites.

Class 38: Telecommunications, providing access to databases and information services on the internet, in particular in the field of music, sport, television, games and entertainment, delivery of music and video files via telecommunications installations or the internet, streaming of audio material via the internet.

Class 41: Arranging and conducting of cultural, entertainment, sporting and concert events, sporting, cultural and artistic activities, publishing, recording of audio and video files relating to events, television entertainment, conducting of games on the internet, music and video recording studios, music and video production; Organisation of concerts, art exhibitions and fashion shows for entertainment purposes.

The contested goods are the following after the applicant’s limitation of 15/06/2017:

Class 9: Software and applications for mobile devices including software and applications for social networking, receipt and transmission of data related to tyres and parts and accessories of vehicles, shopping, fitness, rental of vehicles, vehicle and transportation reservation and vehicle sharing; electronic, encoded, magnetic and electronic key cards for use with vehicles and in respect of vehicles; telephone apparatus; headphones; digital display, for detecting, storing, reporting, monitoring, uploading and downloading data to the internet, mobile devices, and communication with mobile devices.

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 the applicant’s list of goods, 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 contested goods software and applications for mobile devices including software and applications for social networking, receipt and transmission of data related to tyres and parts and accessories of vehicles, shopping, fitness, rental of vehicles, vehicle and transportation reservation and vehicle sharing overlap with the opponent’s goods computer software and are therefore identical.

The contested goods telephone apparatus are similar to the opponent’s services telecommunications, providing access to databases and information services on the internet, in particular in the field of music, sport, television, games and entertainment, delivery of music and video files via telecommunications installations or the internet, streaming of audio material via the internet as they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore they are complementary.

The contested headphones are identical to the opponent’s goods technical stage equipment, namely headphones.

The contested electronic, encoded, magnetic and electronic key cards for use with vehicles and in respect of vehicles are similar to the opponent’s parts and fittings for vehicles as they usually coincide in producer, relevant public and distribution channels.

The contested digital display, for detecting, storing, reporting, monitoring, uploading and downloading data to the internet, mobile devices, and communication with mobile devices are similar to the opponent’s goods technical stage equipment, namely monitors as they may coincide in producer, end consumer and distribution channels.

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 as well as at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

SCORPIONS	SCORPION
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 element ‘SCORPION(S)’ would be associated with a meaning in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, which encompasses at least the public in Ireland, the United Kingdom and Malta.

The earlier mark is the word ‘SCORPIONS’, which is the plural of the English word ‘SCORPION’, which is the contested mark. It refers to ‘a terrestrial arachnid which has lobster-like pincers and a poisonous sting at the end of its jointed tail, which it can hold curved over its back’.

Visually and aurally, as the marks only differ in the additional letter ‘S’ at the end of the earlier mark, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, 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.

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 descriptive 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

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). The signs are highly similar.

The goods and services are partly identical and partly similar. The degree of attention varies from average to high. The distinctiveness of the earlier mark is normal.

The signs are visually, aurally and conceptually similar to a high degree, as the marks only differ in one letter at the end of the earlier mark (‘S’), which will be understood as the plural of the contested mark.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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).

In its observations, the applicant argues that it owns several registrations with the word ‘SCORPION’ in the European Union with which the opponent’s earlier mark has coexisted.

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.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include SCORPION. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include SCORPION. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 617 648 It follows that the contested trade mark must be rejected for all the contested goods.

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 reputation.

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(1)(a) and Article 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

Swetlana BRAUN

Lars HELBERT

Tobias KLEE

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.