OPPOSITION No B 2 865 619

Bike24 GmbH, Breitscheidstr. 40, 01237 Dresden, Germany (opponent), represented by Lippert Stachow Patentanwälte Rechtsanwälte Partnerschaft mbB, Krenkelstr. 3, 01309 Dresden, Germany (professional representative)

a g a i n s t

Bike2 ApS, Jyllandsgade 30, 6400 Sønderborg, Denmark (applicant), represented by Gorrissen Federspiel Advokatpartnerselskab, Silkeborgvej 2, 8000 Aarhus C, Denmark (professional representative).

On 08/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 865 619 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 376 907 . The opposition is based on European Union trade mark registration No 4 832 887 . 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

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

Class  9: Protective helmets for sports, navigation instruments, altimeters, spectacles, spectacle lenses, spectacle frames, tachometers.

Class 12: Bicycles and parts therefor, included in class 12, bicycle accessories, bicycle computers; dress guards for bicycles, bicycle racks, bicycle bells, air pumps, brake linings and bicycle brake shoes, repair outfits for inner tubes.

Class 16: Printed matter, namely mail order catalogues and goods prospectuses, tear-off calendars, calendars, maps, placards, books, photographs.

Class 25 Cyclists' clothing, knitwear, singlets, footwear, headgear, gloves, clothing, except underwear.

Class 35 Retail/wholesale services, via the Internet, for bicycles and parts therefor, included in class 35; retail/wholesale services, via the Internet, for bicycle accessories, in particular bicycle computers, dress guards for bicycles, bicycle racks, bicycle bells, air pumps, brake linings and bicycle brake shoes, repair outfits for inner tubes, bicycle locks, all the aforesaid services included in class 35; retail/wholesale services, via the Internet, for protective helmets for sports, navigation instruments, altimeters, spectacles, spectacle lenses, spectacle frames, tachometers, all the aforesaid services included in class 35; retail/wholesale services, via the Internet, for printed matter, namely mail order catalogues and goods prospectuses, tear-off calendars, calendars, maps, placards, books; photographs, all the aforesaid goods included in class 35; retail/wholesale services, via the Internet, for cyclists' clothing, knitwear, singlets, footwear, headgear, gloves, clothing, except underwear, all the aforesaid goods included in class 35.

The contested goods are the following:

Class 7: Generators; Generating plant; Transmissions for machines; Gears for machines; Transmission control mechanisms.

Class 9: Power packs [batteries]; Batteries for vehicles; Digital electronic controllers; Computer controllers; Energy control devices.

Class 12: Bicycles; Electric bicycles; Self-propelled electric vehicle; Motorised bicycles; Motors, electric, for land vehicles; Driving motors, electric, for land vehicles; Pedal driven land vehicles; Transmission components for land vehicles; Transmissions for land vehicles; Power trains for land vehicles.

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.

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 7

The contested generators; generating plant, transmissions for machines, gears for machines, transmission control mechanisms are all machinery or their parts which are not for land vehicles. They have nothing in common with the opponent´s measuring devices, protective headgear and spectacles and their parts in class 9, nor its bicycles, which are specifically for land use, and their parts and accessories in class 12, much less cyclist´s clothing in class 25 or printed matter in class 16 and any retail services relating to the above. They are of an entirely different nature, purpose and method of use. Their distributors are different and they are neither complementary nor are they in competition. Consumers will not believe them to come from the same commercial origin. They are dissimilar.

Contested goods in Class 9

The contested power packs [batteries]; batteries for vehicles are similar to the opponent´s bicycles in class 12. They are complementary and share distribution channels. They target the same public.

The contested energy control devices are lowly similar to the opponent´s tachometers. They have usually the same producers and share distribution channels. They target the same public.

The contested digital electronic controllers are measuring, detecting and monitoring instruments, indicators and controllers. The contested computer controllers constitute information technology equipment. They are of an entirely different nature, purpose and method of use. Their distributors are different and they are neither complementary nor are they in competition. Consumers will not believe them to come from the same commercial origin. They are dissimilar.

Contested goods in Class 12

The contested bicycles; electric bicycles; self-propelled electric vehicle; motorised bicycles; pedal driven land vehicles are identical to the opponent’s bicycles, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested motors, electric, for land vehicles; driving motors, electric, for land vehicles; transmission components for land vehicles; transmissions for land vehicles; power trains for land vehicles can all be used to power (electronic or motorised) bikes. They are identical to the opponent’s parts therefor [bicycles] in class 12, either because the opponent’s goods include, are included in, or overlap with, the contested goods.

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 found to be identical or similar are directed at the public at large, and at 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.

Taking into consideration the price of vehicles such as motorised bicycles, and the safety considerations involved in their selection, consumers are likely to pay a higher degree of attention in respect of their purchase than for less expensive purchases, such as batteries. The level of attention will therefore vary from average to high.

3. 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).

The earlier mark is a figurative mark made up of the word ‘BIKE’ depicted in blue and the numeral ‘24’ depicted in orange, set below a graphic representation of a section of a bicycle chain, itself depicted in white against a blue, (essentially) square, background. The word ‘BIKE’, meaning bicycle or motorcycle, is a basic, English word known throughout the European Union (being generally one of the first words learnt as a primary academic subject at school, for example). This element is non-distinctive in respect of bikes, bike goods and goods used to power bikes. It is a known fact that there are 24 hours in a day. The orange ‘24’ will be seen as alluding to the round-the clock operability or functionality of the goods in question. It is a non-distinctive element. The graphic element depicting part of a bike chain, albeit conceptually linked to the descriptive content of the word ‘BIKE’ and being weak for the goods at hand itself, is the most distinctive element of the mark owing to its particular stylisation.

The contested sign will be seen as made up of the verbal element ‘BIKE’ made up of black letters save for the final letter which is in a contrasting font and in the colour green. A superscript number 2 lies to the top right of this final letter, also in green. The relevant public will clearly discern the word and meaning of the word ‘BIKE’ when set against the relevant goods, the semantic content of which is discussed above. Again, this verbal element is non-distinctive in relation to the relevant goods. However, the green, squared ‘e’ incorporated in the word has, itself, no clear meaning in relation to the goods and it is this juxtaposition which confers the mark with its distinctiveness.

Visually, the signs coincide in ‘BIKE’, which is non-distinctive. They differ in the colours and fonts deployed and in the graphic chain device of the earlier mark which has no counterpart in the contested sign. Although the image is weak in the context of the goods, it has visual impact and is still the most distinctive element of the mark. The signs also differ in the number ‘24’ which is a non-distinctive element, and in the juxtaposition of a squared ‘e’ within the word ‘BIKE’ of the contested sign which is distinctive (because it is squared).

It is concluded that the signs are not visually similar, as the combination of their parts gives a different visual impression.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the word ‘BIKE’. The pronunciation differs in the sound of the number ‘24’ of the earlier sign and the sound of the expression ‘squared’ created by the superscript number ‘2’ which have no mutual counterpart.

Although the coinciding element is non-distinctive, it is an intrinsic part of both signs and will, therefore, confer a low degree of similarity.

Conceptually, the signs coincide in the concept of ‘BIKE, which is reinforced by the image of a bike chain in the earlier sign. They differ in the concept of the number ‘24’ of the earlier sign and in the distinctive concept of a squared ‘e’ created by the superscript number ‘2 in the contested sign.

Although the coinciding element is non-distinctive, it is an intrinsic part of the conceptual information conveyed by both signs and will, therefore, confer a low degree of similarity.

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 a low level of distinctiveness in respect of the goods in question from the perspective of the public in the relevant territory.

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 goods are identical, similar and dissimilar and the level of attention varies from average to high. The signs coincide in the element ‘BIKE-, which forms an integral part of each sign, conferring a low degree of aural and conceptual similarity, but which is, nonetheless, non-distinctive. The signs produce a different visual impact and contain further elements which clearly set them apart, and which are sufficient to exclude any likelihood of confusion between the marks.

Considering all the above, there is no likelihood of confusion on the part of the public for any of the goods. Regardless of the level of attention, consumers will regard them as coming from very different sources.

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Plamen IVANOV

Keeva DOHERTY

Natascha GALPERIN

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.