OPPOSITION No B 2 892 993

Norma Lebensmittelfilialbetrieb Stiftung & Co. KG, Heisterstr. 4, 90441, Nürnberg, Germany (opponent), represented by Betten & Resch Patent- und Rechtsanwälte PartGmbB, Maximiliansplatz 14, 80333, München, Germany (professional representative)

a g a i n s t

Shenzhen Xiaomage Car Accessory Limited, No. 11A, Yinghuafu, No. 3, Longchenghuafu, Longcheng Street, Longgang District, Shenzhen Guangdong Province, China (applicant), represented by Patentanwälte Gierlich & Pischitzis Partnerschaft mbB, Gerbermühlstraße 11, 60594, Frankfurt, Germany (professional representative).

On 20/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 892 993 is partially upheld, namely for the following contested goods:

Class 9: Data processing apparatus; ear plugs for divers; life buoys.

Class 12: Driverless cars [autonomous cars]; trailer hitches for vehicles; vehicle running boards; ski carriers for cars; rear view mirrors; wheel rims for automobiles; automobile wheels; cars for cable transport installations; safety seats for children, for vehicles; upholstery for vehicles; windows for vehicles; anti-theft devices for vehicles; vehicle seats; air vehicles; automobile tires [tyres]; mobility scooters; electric vehicles; automobile bodies; sun blinds adapted for automobiles.

2. European Union trade mark application No 16 327 108 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 327 108 , namely against all the goods in Classes 9 and 12. The opposition is based on international trade mark registration No 1 250 053 , designating the European Union. 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.

a) The goods

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

Class 10: Orthopaedic articles, in particular orthopedic bandages, support bandages, elastic bandages, orthopedic joint bandages, orthopedic knee braces, orthopedic belt; equipment for physiotherapy.

Class 12: Apparatus for locomotion by land, air or water, especially bicycles, bicycle parts, bicycle parts and bicycle accessories; repair outfits for inner tubes, air pumps, spoke tool; safety seats for vehicles, in particular for bicycles; ski and bike racks for cars.

Class 27: Mats and matting; gym mats, exercise mats, floor protection and anti-slip mats for home exercise equipment.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; fitness, home fitness and body-building equipment, gym and gymnastics equipment.

After the limitation of 22/12/2017, the contested goods are the following:

Class 9: Calculating machines; data processing apparatus; sleeves for laptops; computer hardware; protective films adapted for computer screens; vehicle radios; covers for smartphones; cases for smartphones; protective films adapted for smartphones; distribution boxes [electricity]; ear plugs for divers; life buoys.

Class 12: Driverless cars [autonomous cars]; trailer hitches for vehicles; vehicle running boards; ski carriers for cars; rear view mirrors; Wheel rims for automobiles; automobile wheels; cars for cable transport installations; safety seats for children, for vehicles; upholstery for vehicles; windows for vehicles; anti-theft devices for vehicles; vehicle seats; air vehicles; automobile tires [tyres]; mobility scooters; electric vehicles; automobile bodies; Sun blinds adapted for automobiles.

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

The term ‘in particular’, 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).

The contested goods in Class 9

The contested data processing apparatus are similar to the opponent’s games as they usually coincide in producer, relevant public and distribution channels.

The contested ear plugs for divers; life buoys are lowly similar to the opponent’s goods sporting articles not included in other classes as they usually coincide in producer, relevant public and distribution channels.

The contested calculating machines are machines to calculate data. These goods have nothing in common with the for example the opponent’s games as their purpose is different. They have a different nature, do not share the same distribution channels and are neither in competition or complementary. Therefore, these goods are considered to be dissimilar. For the same reasons the contested calculating machines are also dissimilar to the remaining earlier goods in Classes 10, 12, 27 and 28.

The contested sleeves for laptops; computer hardware; protective films adapted for computer screens; vehicle radios; covers for smartphones; cases for smartphones; protective films adapted for smartphones; distribution boxes [electricity] are different to all the opponent’s goods in Classes 10, 12, 27 or 28. They have a different purpose and nature, do not share the same distribution channels and are neither in competition or complementary. Therefore, these goods are considered to be dissimilar.

The contested goods in Class 12

Ski carriers for cars are identically included in both lists of goods (incl. synonyms).

The contested driverless cars [autonomous cars]; mobility scooters; electric vehicles are included in the broad category of the opponent’s apparatus for locomotion by land. The goods are identical.

The contested air vehicles are included in the broad category of the opponent’s apparatus for locomotion by air. The goods are identical.

The contested safety seats for children, for vehicles are included in the opponent’s broad category of safety seats for vehicles, in particular for bicycles and are therefore identical.

The contested goods vehicle seats include as a broader category the opponent’s goods safety seats for vehicles, in particular for bicycles and are therefore identical. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested trailer hitches for vehicles; vehicle running boards; rear view mirrors; wheel rims for automobiles; automobile wheels; upholstery for vehicles; windows for vehicles; anti-theft devices for vehicles; automobile tires [tyres]; automobile bodies; sun blinds adapted for automobiles are parts and accessories of/for vehicles. They are considered to be similar to the opponent’s apparatus for locomotion by land as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested cars for cable transport installations are included in the broad category of the opponent’s apparatus for locomotion by land, air or water. The goods are identical.

b) 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 found to be identical or similar (to various degrees) are directed at the public at large.

The degree of attention is average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Visually, the signs coincide in all their verbal elements, namely 'topfit’. The only difference is in the stylisation of the letters which is so simple that it will not distract the consumer's attention away from the words it merely serves to embellish. Therefore, the signs are visually highly similar.

Aurally, the signs are identical.

Conceptually, the relevant public may, aside from understanding the concept of the elements 'TOP' and 'FIT' separately, also grasp the meaning of the expression as a whole (i.e. 'fitting onto the top of something' or ‘great fit as top’ in English or ‘in top form’ in German, see: https://www.collinsdictionary.com/dictionary/german-english/topfit). Either way, the marks evoke the same concept and are therefore conceptually identical.

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

d) 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.

The applicant claims that the earlier mark has a very low distinctiveness for the registered goods in Class 12, since the term ‘topfit’ is a German word meaning ‘a better shape than usual’. Therefore, the meaning of the earlier mark is only a positive description of the quality of the goods used.

In the opinion of the Opposition Division, in the present case, the distinctiveness of the earlier trade mark as a whole must be seen as lower than average at least in relation to some of the relevant goods in question (i.e. ski carriers for cars) and for a part of the relevant public that understands it. The mark has a normal degree of distinctiveness for the remaining goods in relation to which it has no meaning from the perspective of the public in the relevant territory and also for the remaining part of the relevant territory, where it has no meaning in relation to the goods.

e) 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 goods are partly identical, partly similar to varying degrees and partly dissimilar. The earlier mark enjoys lower than average degree of inherent distinctiveness at least in relation to the part of the relevant goods and for a part of the relevant public (i.e. English-speaking part). However, in relation to some of the goods and remaining part of the public the distinctiveness of the earlier mark must be considered normal.

The signs are visually similar to a high degree and aurally and conceptually identical. The differences between the signs are confined to the stylisation of the letters of the contested sign, which is so simple that it will not distract the consumer's attention away from the words it merely serves to embellish.

The Court has emphasised on several occasions, that finding of a low distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs (which is applicable in the present case) and between the goods or services covered. The differences between the signs are not enough to guarantee the safe differentiation of the conflicting signs by the relevant public.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public (even when a higher than average degree of attention) and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 250 053.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (including those that were found to be lowly similar) to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Keeva DOHERTY

Janja FELC

Ana MUÑIZ RODRIGUEZ

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.