OPPOSITION No B 2 988 528

Motorola Trademark Holdings, LLC, 222 W. Merchandise Mart Plaza, Suite 1800, 60654 Chicago, United States of America (opponent), represented by Brandstock Legal Rechtsanwaltsgesellschaft MBH, Rückertstr. 1, 80336 München, Germany (professional representative)

a g a i n s t

Agnieszka Walendzik Profit, Ignacego Paderewskiego 50, 43 600 Jaworzno, Poland (applicant), represented by Bartłomiej Henryk Tomaszewski, Ul. Eugeniusza Kwiatkowskiego 1 lok 12, 03-984 Warszawa, Poland (professional representative).

On 24/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 988 528 is partially upheld, namely for the following contested goods and services:

Class 9: Computer software; computer programmes [programs], recorded; computer programs, downloadable software; computer operating systems; audiovisual sound and image recording carriers; blank and recorded sound and image recording carriers; blank and prerecorded data carriers; disks, magnetic; computer memory devices; memory sticks; hard disc drives; magnetic and optical data carriers; floppy discs; audio-video digital disks; blanks; DVDs; computer files; audio-video computer files; interfaces.

Class 35: Commercial information relating to the sale of access to telecommunications services.

Class 38: Dissemination of text and images via computer terminals and the internet; online news services; providing digital access to photographs and audiovisual works; news agencies; news or information agencies; providing a virtual space for discussion forums; teleconferencing services; message sending; transmission of electronic mail; computer-aided transmission of messages and images; providing online information from computer databases; providing access to music, films and collections of images on the web; providing and rental of internet access time; rental of electronic communications apparatus.

Class 42: Design of computer websites and website programming, including increasing search engine hits therefor; creation and administration of internet websites; maintaining websites for others; operating and providing internet search engines; computer software design; computer software consultancy; hosting computer sites (websites); administration of computer websites and internet portals; computer system analysis; installation of software; updating of computer software; computer software design; copying of computer software; maintenance of software; programming services; computer system design; computer rental; rental of software for computers and mobile telecommunications apparatus; conversion of data or documents from physical to electronic media.

2. European Union trade mark application No 16 513 715 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 513 715 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 12 314 761 for the word mark ‘MOTO’ and European Union trade mark registration No 15 510 795 for the word mark ‘MOTO MOD’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 12 314 761 and No 15 510 795.

a) The goods and services

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

European Union trade mark registration No 12 314 761

Class 9: Telephones, mobile phones, smartphones, tablet computer, computers, handheld and mobile digital electronic devices with wireless communication capabilities, radio telephones, pagers, two-way radios, radio transmitters, radio receivers, radio transceivers, electronic organizers, and related accessories for the foregoing goods, namely, headsets, headphones, microphones, speakers, carrying cases, protective cases and covers, protective or decorative skins, belt clips; electronic docking stations, stands, and mounts for mobile phones, tablets, handheld computers, and handheld and mobile digital electronic devices with wireless communication capabilities; cables and connectors, and keyboards; radio base stations, switches, routers, computers, computer software and programs used for transmission or reproducing or receiving of sound, images, video or data over a telecommunications network or system between terminals and for enhancing and facilitating use and access to computer networks and telephone networks; computer software for use in general purpose database management; computer e-commerce software to allow user to safely place orders and make payments in the field of electronic business transactions via a global computer network or telecommunications network; computer software for training and product support for computers and mobile phones in the field of communications; computer utility software for performing computer maintenance work; computer game software for mobile handsets; computer software and programs featuring music, movies, animation, electronic books, games in the field of general entertainment; computer software for the distribution of information and interactive multimedia content containing text, images, video and sound to users in the field of communications; computer software and programs for management and operation of wireless telecommunications devices; computer software for accessing, searching, indexing and retrieving information and data from global computer networks and global communication networks, and for browsing and navigating through web sites on said networks; computer software for sending and receiving short messages and electronic mail and for filtering non-text information from the data; analog and digital radio transceivers or receivers for data, voice, image and video communication, modems, global positioning units, batteries, battery chargers, power adapters, and antennas; cameras; digital cameras, digital video cameras; wearable computing peripherals; personal wearable and interchangeable electronic modules, namely personal identifiers for telephones, mobile phones, smartphones, tablets, computers, handheld and mobile digital electronic devices with wireless communication capabilities.

Class 38: Telecommunication; wireless and digital communication services; television broadcasting; electronic voice messaging; video conferencing; electronic transmission of voice, video, images, messages and data; text messaging; providing access to a telecommunications network; network management and administration; telecommunications network planning; radio broadcasting; providing telecommunication connections to a global computer network; providing multiple-user access to a global computer information network via computers and handheld and mobile digital electronic devices with wireless communication capabilities; rental and leasing of telecommunication networks and telecommunications apparatus, namely, base stations comprising of antennas and antenna towers, transmitters, receivers, signal processors, microwave radio links, cable links, power supplies and cabinets, electronic base station controllers, directional antennas, microwave radios, telephone exchanges, transmission equipment for use in communications, access nodes, switching apparatus for telecommunication purposes, servers, routers, data cards, modems, multiplexers, electrical cables and optical fiber cables, software and programs for scrambling, descrambling, encoding and decoding of voice, data, images and video.

European Union trade mark registration No 15 510 795

Class 9: Compact discs, DVDs and other digital recording media; data processing equipment, computers, tablet computers, notebooks and handheld computers; handheld and mobile digital electronic devices with wireless communication capabilities for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files; mobile phones, smartphones; cameras, digital cameras, digital video cameras; gaming devices; global positioning units, display hardware for electronic devices; displays for electronic devices; hardware for electronic devices; computer software; computer hardware with integrated software technology facilitating enhanced capabilities on smart electronic devices, including smartphones and tablets; radio telephones, pagers, two-way radios, radio transmitters, radio receivers, radio transceivers, electronic organizers, and related accessories for the foregoing goods, namely, headsets, headphones, microphones, speakers, carrying cases, protective cases and covers, protective or decorative skins, belt clips; batteries, phone batteries, battery chargers, power adapters, and antennas; computer storage devices; projectors; wearable computer peripherals; wearable smart devices; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images.

The contested goods and services are the following:

Class 9: Computer software; computer programmes [programs], recorded; computer programs, downloadable software; computer operating systems; audiovisual sound and image recording carriers; blank and recorded sound and image recording carriers; blank and prerecorded data carriers; disks, magnetic; computer memory devices; memory sticks; hard disc drives; magnetic and optical data carriers; floppy discs; audio-video digital disks; blanks; DVDs; computer files; audio-video computer files; interfaces.

Class 35: Commercial information relating to the sale of access to telecommunications services; subscriptions to telecommunications database services; business management and organisation; analysis and gathering of data relating to internet traffic for marketing and advertising purposes; advertising for the purpose of sales promotion for others; personnel management consultancy; public relations agencies; creating an image of the company, services and goods; marketing services; advertising agencies; radio- and tv- advertising; bill-posting; advertising by mail order; publicity column preparation; wholesaling and retailing of motor vehicles and spare parts therefor; wholesaling and retailing via the internet of motor vehicles and spare parts therefor; business surveys; commercial information relating to motor vehicles and spare parts for motor vehicles; organisation of online sale; aunctioneering; brokerage relating to the wholesaling and retailing of advertising space, including online; advertising and promotion of goods and of services; sales promotion for others; provision of advertising space; commercial information agencies; cost price analysis; marketing research; auditing; marketing studies; business inquiries; opinion polling; economic forecasting; document reproduction; distribution of advertising material; compilation of information into a computer database; compilation and systemisation of information into computer databases; processing of advertising text; writing of publicity texts; dissemination of advertisements; layout services for advertising purposes; updating of advertising material; dissemination of advertisements; publication of publicity texts; demonstration of goods; presentation of services; online advertising on a computer network; publication of publicity texts; bill-posting; organization of fairs and exhibitions for commercial and advertising purposes; brokerage of commercial transactions; commercial advice; processing and advertising campaigns; promotion of goods; publicity material rental; personnel consultancy; personnel recruitment; employment agencies; personnel selection using psychological testing; production of advertising films; production of radio plays and musical works for advertising purposes; procurement of goods for others; data search in computer files for others; website positioning for commercial and advertising purposes; commercial information relating to intellectual property; matching buyers and sellers of intellectual property rights, namely arranging of commercial and business contacts.

Class 38: Dissemination of text and images via computer terminals and the internet; online news services; providing digital access to photographs and audiovisual works; news agencies; news or information agencies; providing a virtual space for discussion forums; teleconferencing services; message sending; transmission of electronic mail; electronic advertising services; computer-aided transmission of messages and images; providing online information from computer databases; providing access to music, films and collections of images on the web; providing and rental of internet access time; rental of electronic communications apparatus.

Class 42: Design of computer websites and website programming, including increasing search engine hits therefor; creation and administration of internet websites; maintaining websites for others; operating and providing internet search engines; computer software design; computer software consultancy; hosting computer sites (websites); administration of computer websites and internet portals; computer system analysis; installation of software; updating of computer software; computer software design; copying of computer software; maintenance of software; programming services; computer system design; computer rental; rental of software for computers and mobile telecommunications apparatus; conversion of data or documents from physical to electronic media.

Class 45: Mediation in legal procedures relating to the sale of intellectual property rights; intellectual property consultancy; copyright management; licensing of intellectual property; licensing of computer software and audio-video works; monitoring intellectual property rights for legal advisory purposes; legal research relating to the legality of software.

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 and opponent’s lists 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107). On the other hand, the term ‘namely’, also used in the applicant’s and opponent’s lists of goods and services, shows 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.

Contested goods in Class 9

DVDs; computer software are identically contained in the applicant’s list and the opponent’s list of goods in connection with European Union trade mark registration No 15 510 795.

The contested computer programmes [programs], recorded; computer programs, downloadable software; computer operating systems; computer files; audio-video computer files; interfaces are included in the broad category of, or overlap with, the opponent’s computer software covered by European Union trade mark registration No 15 510 795. Therefore, they are identical.

The contested audiovisual sound and image recording carriers; blank sound and image recording carriers; blank data carriers; disks, magnetic; computer memory devices; memory sticks; hard disc drives; magnetic and optical data carriers; floppy discs; audio-video digital disks; blanks are included in the broad category of, or overlap with, the opponent’s compact discs, DVDs and other digital recording media covered by European Union trade mark registration No 15 510 795. Therefore, they are identical.

The contested recorded sound and image carriers; prerecorded data carriers are highly similar to the opponent’s apparatus for transmission of sound or images because they coincide in the sales outlets, producers and relevant public. Furthermore, they are complementary to each other.

Contested services in Class 35

The contested commercial information relating to the sale of access to telecommunications services consists essentially in providing commercial information in respect of the provision of access to telecommunications services and is similar to the opponent’s telecommunication in Class 38 covered by European Union trade mark registration No 12 314 761 because they have the same distribution channels, target the same public and are complementary to each other. Moreover, they coincide in their providers.

The contested subscriptions to telecommunications database services; business management and organisation; analysis and gathering of data relating to internet traffic for marketing and advertising purposes; advertising for the purpose of sales promotion for others; personnel management consultancy; public relations agencies; creating an image of the company, services and goods; marketing services; advertising agencies; radio- and TV- advertising; bill-posting (listed twice); advertising by mail order; publicity column preparation; wholesaling and retailing of motor vehicles and spare parts therefor; wholesaling and retailing via the internet of motor vehicles and spare parts therefor; business surveys; commercial information relating to motor vehicles and spare parts for motor vehicles; organisation of online sale; aunctioneering; brokerage relating to the wholesaling and retailing of advertising space, including online; advertising and promotion of goods and of services; sales promotion for others; provision of advertising space; commercial information agencies; cost price analysis; marketing research; auditing; marketing studies; business inquiries; opinion polling; economic forecasting; document reproduction; distribution of advertising material; compilation of information into a computer database; compilation and systemisation of information into computer databases; processing of advertising text; writing of publicity texts; dissemination of advertisements (listed twice); layout services for advertising purposes; updating of advertising material; publication of publicity texts (listed twice); demonstration of goods; presentation of services; online advertising on a computer network; organization of fairs and exhibitions for commercial and advertising purposes; brokerage of commercial transactions; commercial advice; processing and advertising campaigns; promotion of goods; publicity material rental; personnel consultancy; personnel recruitment; employment agencies; personnel selection using psychological testing; production of advertising films; production of radio plays and musical works for advertising purposes; procurement of goods for others; data search in computer files for others; website positioning for commercial and advertising purposes; commercial information relating to intellectual property; matching buyers and sellers of intellectual property rights, namely arranging of commercial and business contacts include mainly services rendered with the object of helping with the operation or management of a commercial undertaking, or the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments, concerning all kinds of goods or services. Whereas the opponent’s goods in Class 9 mainly cover apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; computer software and hardware; photographic apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity and the services in Class 38 are telecommunication services. The contested services are dissimilar to all the opponent’s goods and services because they have nothing in common. They are of a different nature and purpose. They do not follow the same method of use and are not complementary either. They are not in competition, do not share the same distribution channels / sales outlets nor target the same public. Moreover, they are provided by different companies.

Contested services in Class 38

Contrary to the applicant’s assertions, the contested dissemination of text and images via computer terminals and the internet; online news services; providing digital access to photographs and audiovisual works; news agencies; news or information agencies; providing a virtual space for discussion forums; teleconferencing services; message sending; transmission of electronic mail; computer-aided transmission of messages and images; providing online information from computer databases; providing access to music, films and collections of images on the web; providing and rental of internet access time; rental of electronic communications apparatus are included in the broad category of the opponent’s telecommunication covered by European Union trade mark registration No 12 314 761. Therefore, they are identical.

The contested electronic 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 the client’s position in the market and acquiring a competitive advantage through publicity (as well as related information and advice). In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies, which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services. The opponent’s goods in Class 9 and 38 as explained above mainly cover electronic devices and telecommunication services. These contested services are dissimilar to all the opponent’s goods and services because they are of a different nature and purpose. They do not follow the same method of use and are not complementary. They are not in competition, do not share the same distribution channels nor target the same public. Moreover, they are provided by different companies.

Contested services in Class 42

The contested hosting computer sites (websites); computer rental; installation of software; updating of computer software; maintenance of software; rental of software for computers and mobile telecommunications apparatus are similar to the opponent’s telecommunication in Class 38 covered by European Union trade mark registration No 12 314 761 as these services are complementary, they may share the same purpose and distribution channels. Moreover, they are offered by the same providers.

The contested computer software consultancy; computer software design; copying of computer software; programming services; computer system design; design of computer websites and website programming, including increasing search engine hits therefor; creation and administration of internet websites; maintaining websites for others; operating and providing Internet search engines; computer software design; administration of computer websites and internet portals; conversion of data or documents from physical to electronic media are, contrary to the assertions of the applicant, specific types of computer programming services and services very closely related to them. These services are closely linked to the opponent’s computer software in Class 9 covered by European Union trade mark registration No 15 510 795. This is because, in the field of computer science, producers of computers and/or software will also commonly render computer- and/or software-related services (as a means of innovating or keeping the system updated, for example). Consequently, although the goods and services have different natures, they both target the same public and have the same producers/providers. Furthermore, the goods and services are complementary. For these reasons, they are considered similar.

The contested computer system analysis is similar to the opponent’s data processing equipment, computers in Class 9 covered by European Union trade mark registration No 15 510 795 because they coincide in the end users and providers. Moreover, they are complementary.

Contested services in Class 45

The contested mediation in legal procedures relating to the sale of intellectual property rights; intellectual property consultancy; copyright management; licensing of intellectual property; licensing of computer software and audio-video works; monitoring intellectual property rights for legal advisory purposes; legal research relating to the legality of software are all legal services dealing with intellectual property. They are directed at intellectual property holders and are highly specific. Clearly, these services have a different nature, purpose and method of use from the opponent’s goods and services as summarised above. The fields of activity are not directly related, they are of a different nature and have different purposes. The goods and services of the earlier mark and the contested services are not in any kind of competition. They are not produced or provided by the same undertakings, their methods of use are different and they do not share the same distribution channels. Consequently, they are considered to be dissimilar.

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 and services found to be identical or similar (to varying degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication and specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

EUTM No 15 510 795 MOTO MOD EUTM No 12 314 761 MOTO
Earlier trade mark	Contested sign

The relevant territory is 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 word ‘moto’ will be associated, at least, by a part of the relevant public such as the English-speaking public as referring to motors or motor vehicles (25/06/2015, R 2397/2014-1, Moto Lube, § 19). Therefore, the Opposition Division finds it relevant to focus the comparison of the signs on the English-speaking part of the public. Since no link may be established between the word ‘MOTO’ and the goods and services in question it is, therefore, fully distinctive.

The earlier marks are word marks, namely ‘MOTO’ (hereinafter referred to as earlier mark 1) and ‘MOTO MOD’ (hereinafter referred to as earlier mark 2). The word ‘MOD’ informally refers to ‘modern’ (according to information extracted on 14/01/2019 from Oxford English dictionary https://en.oxforddictionaries.com/english) and thus it has a limited distinctive character due to its laudatory nature.

As regards the contested sign, although it is composed of one verbal element ‘MOTO$ELL’, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58).

The contested mark is a figurative mark composed of the verbal components ‘MOTO’ and ‘$ELL’ written in lower case letters (in red and black respectively) and a figurative element depicting a car viewed from the front (in black). The car device is fully distinctive. As regards the second element, ‘$ELL’, although it starts with the dollar symbol, it is likely that the vast majority of the public will read it as the English word, ‘SELL’, indicating trading, namely selling in general. Since a link can be made with the goods and services in question, it is, therefore, of limited distinctiveness.

The contested sign has no element that could be considered clearly more dominant than other elements.

Account must be taken that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In addition, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs fully coincide in the word ‘MOTO’ at the beginning of all the signs. The earlier mark 1 and the contested sign differ in the additional word ‘$ELL’ (which has a limited distinctiveness), in the car device and in the colours of the contested sign. The earlier mark 2 and the contested sign also differ in the additional word ‘MOD’ of the earlier mark, which as explained above for the part of the public taken into consideration will be associated with ‘modern’ and has a limited distinctive character. Considering the principle that consumers generally tend to focus on the beginning of a sign and the distinctive character of the coinciding elements, the signs are visually similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛MO‑TO’, present identically at the beginning of all the signs. The pronunciation differs in the syllable ‛SELL’ of the contested mark, which has no counterpart in the earlier marks; and additionally in the syllable ‘MOD’ of earlier mark 2.

Taking into account what has been said above regarding the distinctiveness of each of the elements, the signs are similar to an above average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Despite the differing concepts, ‘SELL’ in the contested sign and ‘MOD’ in the earlier mark 2, they are of limited distinctiveness. Therefore, contrary to the applicant’s assertions, and taking into account that the word ‘MOTO’ plays an independent distinctive role both in the contested sign and in the earlier marks, insofar as all the signs may be associated with the concept of ‘motors or motor vehicles’, the signs are conceptually similar to an above average degree.

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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of an element of limited distinctiveness in earlier mark 2, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association that the relevant public might make between the two marks and on the degree of similarity between the signs and the goods (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sàbel, EU:C:1997:528, § 22).

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).

In this case, the goods and services are partially identical, partially similar and partially dissimilar. The signs are visually, aurally and conceptually similar to an above average degree. The earlier marks are inherently distinctive to a normal degree. The goods and services found to be identical or similar (to varying degrees) are directed at the public at large, as well as at business customers. The relevant public’s degree of attention varies from average to high.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, 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).

Bearing in mind the similarities between the signs mentioned above, it is concluded that the relevant public could believe that the goods and services found to be identical and similar (to varying degrees) come from the same undertaking or economically linked undertakings. Therefore, there is a likelihood of confusion on the part of the English-speaking 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 varying degrees) to those of the earlier trade marks.

The rest of the contested goods and 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 goods and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use and reputation as claimed by the opponent and in relation to identical and similar (to varying degrees) goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

 European Union trade mark registration No 11 972 213 for the word mark ‘MOTO X’.

 European Union trade mark registration No 12 283 561 for the word mark ‘MOTO G’.

 European Union trade mark registration No 12 866 109 for the word mark ‘MOTO E’.

 European Union trade mark registration No 15 473 952 for the word mark ‘MOTO Z’.

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Boyana NAYDENOVA

María del Carmen COBOS PALOMO

Helen Louise MOSBACK

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.