OPPOSITION No B 2 934 431

BasicNet S.p.A., Largo M. Vitale, 1, 10152, Torino, Italy (opponent), represented by Sindico-Serantoni, Corso Cairoli, 2, 10123, Torino, Italy (professional representative)

a g a i n s t

Qianjiang-Keeway (Európa) Ipari és Kereskedelmi Zártkörüen Müködő Részvénytársaság, Közuzó ut 8., 2000, Szentendre, Hungary (applicant), represented by SBGK Ügyvédi Iroda, Andrássy út 113., 1062, Budapest, Hungary (professional representative).

On 14/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 934 431 is upheld for all the contested goods, namely:

Class 12: Vehicles; apparatus for locomotion by land, air or water.

2. European Union trade mark application No 16 542 003 is rejected for all the contested goods. It may proceed for the remaining services.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 542 003 for the word mark ‘KEEWAY’, namely against all the goods in Class 12. The opposition is based on European Union trade mark registration No 857 557 for the word mark ‘K.WAY’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK OF PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant argues that the opposition should be rejected for some of the registered goods in Class 12, namely vehicles; apparatus for locomotion by land, air or water because the opponent did not prove that the mark on which it relied was in use for these goods. The statement is based on an analysis carried out by the applicant of the documentation submitted by the opponent to support its claim regarding the enhanced distinctiveness of the earlier mark.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the applicant did not submit an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use, and the applicant’s arguments in this respect have to be set aside.

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 on which the opposition is based are the following:

Class 12: Vehicles; apparatus for locomotion by land, air or water.

The contested goods are the following:

Class 12: Vehicles; apparatus for locomotion by land, air or water.

Vehicles; apparatus for locomotion by land, air or water are identically contained in both lists of 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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

Taking into consideration the price of vehicles, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a vehicle or apparatus for locomotion by land, air or water, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T‑63/09, Swift GTi, EU:T:2012:137, § 39-42).

3. The signs

K.WAY	KEEWAY
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 verbal elements of the marks are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division considers it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as the Spanish-speaking part of the public.

Since neither of the signs as a whole has any meaning for the public under consideration, they have a normal degree of distinctiveness for the relevant goods.

Visually, the signs coincide in the sequence of letters ‘K*WAY’. They differ only in the dot in the second position in the earlier mark and in the second and third letters, ‘EE’, of the contested sign.

Therefore, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘K*WAY’. They differ in the second and third letters, ‘EE’, of the contested sign, which have no counterpart in the earlier mark. The dot in the earlier mark will not be pronounced, but is likely to cause consumers to divide the sign into two, pronouncing the first letter, ‘K’, and the following letters, ‘WAY’, as separate syllables. Consequently, the marks also coincide in rhythm and intonation because they will each be pronounced in two syllables by the relevant public: /k-way/ and /kee-way/.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 meaning for any of the goods 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (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, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are identical. The degree of attention of the relevant public is high and the earlier mark has a normal degree of distinctiveness, which affords it a normal scope of protection. The signs are visually and aurally similar to at least an average degree, and the conceptual aspect does not influence the assessment of the similarity of the signs.

The differences between the signs, which lie in the second and third letters of the contested mark versus a dot in the earlier mark, may be easily overlooked by consumers and are not enough to overcome the similarities, even for consumers who will pay a high degree of attention.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-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 857 557 for the word mark ‘K.WAY’. 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 extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

In its observations, the applicant argues that the contested mark, ‘KEEWAY’, has been protected by international registration No 852 513 since 2005 and has national registrations in more than 50 countries. The Opposition Division notes that no priorities or seniorities were claimed when the application was filed. Moreover, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Therefore, this argument is to be set aside.

The applicant also makes reference to the opponent’s goods and raises the issue of the allegedly different target publics of the conflicting signs. In particular, the applicant claims that the opponent specialises in automotive goods, security equipment and clothing, while the applicant mainly produces motorcycles. It should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T‑568/12, Focus extreme, EU:T:2014:180, § 30 and the case‑law cited therein). Therefore, the argument raised by the applicant is irrelevant.

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

Boyana NAYDENOVA

Jorge ZARAGOZA GÓMEZ

María del Carmen COBOS PALOMO

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.