OPPOSITION No B 3 014 142

Jaguar Land Rover Limited, Abbey Road, Whitley, Coventry CV3 4LF, United Kingdom (opponent), represented by Reddie & Grose LLP, The White Chapel Building, 10 Whitechapel High Street, London E1 8QS, United Kingdom (professional representative)

a g a i n s t

Verus Eood, Trakia 12, Sofia 1504, Bulgaria (applicant), represented by Erich Auer, Unit 10, 80 Lytham Road, Fulwood, Preston PR2 3AQ, United Kingdom (professional representative).

On 29/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 014 142 is partially upheld, namely for the following contested goods:

Class 9: Recorded content; Information technology and audiovisual apparatus; Regulated power supply apparatus; Apparatus, instruments and cables for electricity; Optical devices, enhancers and correctors; Navigation, guidance, tracking, targeting and map making devices; Measuring, detecting and monitoring instruments, indicators and controllers; Scientific research and laboratory apparatus; Parts and accessories for all the aforesaid goods, included in this class; Telephones; apps; widgets; Software; Hardware.

Class 12: Apparatus for locomotion by land, air or water, and parts and fittings therefor; Vehicles and parts and fittings therefor.

2. European Union trade mark application No 16 593 006 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 16 593 006 for the word mark ‘JOY IN MOTION’. The opposition is based on European Union trade mark registration No 14 292 783 for the word mark ‘INMOTION’. The opponent invoked Article 8(1)(b) and 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.

a) The goods and services

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

Class 9: Global positioning system (GPS); Electrical apparatus, namely, charging stations for charging electric vehicles; Computer software for wireless content delivery; Downloadable mobile applications to make restaurant reservations, locate parking, make travel arrangements; Downloadable mobile applications to reserve parking space, request valet service, order transport and delivery of parcels, match drivers with individuals for rides, order chauffeur and concierge services; Downloadable mobile applications to locate vehicle charging stations, order taxi transportation, book tickets for sporting, cultural and entertainment events, book rental or lease of cars, set up ride shares; Downloadable mobile applications to request and obtain car history, participate in car rental club, obtain information about public and mass transit, and to manage business travel; Computer software, namely, electronic financial platform that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment; Computer hardware and software system for tracking driver behaviour to collect and transmit results with recommendation for vehicle selection; Downloadable mobile applications for planning routes and modes of transportation with possibility to earn points that can be used to acquire work benefits and vouchers for goods and services of others; mobile application software for connecting drivers and passengers; mobile application software for automated scheduling and dispatch of motor vehicles; mobile application software for coordinating transportation services; mobile application software for engaging transportation services; Downloadable cloud computer software for use in providing communications and entertainment connectivity in connection with the use of motor land vehicles; Software and computer hardware, namely, sensors, computers, and wireless transceivers to provide connectivity within the vehicle, between vehicles, with cell phones, and with data centers, in addition to tactile, audible, and visual interfaces to interact with occupants of the vehicle; Diagnostic apparatus consisting of sensors for use in testing vehicle function and in diagnosing vehicle electrical and mechanical problems, integrated into a motor vehicle; Wireless transmission and receiving equipment for use in connection with remote computers for use in automobiles for tracking, monitoring and diagnosing vehicle maintenance and for providing information to drivers; Computer application software for smartphones, PDA devices and tablet computers, namely, software for use by drivers of vehicles and passengers for accessing, viewing, and interacting with and downloading information and entertainment content, all in the field of automobiles via the Internet; Downloadable software and on-board computer software that provides users with remote and in-vehicle access to motor vehicle functions and functions relating to driver safety, convenience, communication, entertainment, and navigation; downloadable software and on-board computer software that allow users to track and locate stolen vehicles, charge electronics, and store and synchronize collected personalized user and vehicle information through a data cloud; Electronic interface modules for wired and wireless interface of mobile phones and electronic media players with an automotive electrical system; all of the above integrated into motor vehicles.

Class 12: Motor land vehicles; parts and fittings for vehicles; engines for motor land vehicles; wheels for vehicles; alloy wheels; wheel trims; wheel rims; hub caps for wheels; hub centre caps; wheel covers; wheel sprockets; arm rests for vehicle seats; luggage bags specially adapted for fitting in the boot of vehicles; car interior organizer bags, nets and trays specially adapted for fitting in vehicles; head-rests for vehicle seats; vehicle head rest covers; wing mirror protective and vanity covers; car seat covers; covers for vehicle steering wheels; fitted covers for vehicles; spoilers for vehicles; covers for vehicles; seats for vehicles; safety harnesses for vehicles; radiator grilles for vehicles; trim panels for vehicle bodies; bicycles; non-motorised scooters; parts, fittings and accessories for bicycles or scooters; strollers and prams, and their parts and accessories; baby, infant and child seats for vehicles; electronic interface modules sold as an integral part of a motor land vehicle.

Class 37: Charging station services for electric vehicles; vehicle battery charging; Automobile customization services; automotive upgrade services; vehicle maintenance and repair; vehicle cleaning; Providing emergency roadside assistance service, namely, responding to calls for roadside assistance; Providing vehicle maintenance and repair information.

Class 38: Providing electronic transmission of credit card transaction data and electronic payment data via a global computer network; Electronic transmission and streaming of digital media content for others via global and local computer networks; Telecommunication services, namely, providing electronic message alerts via the internet; Telecommunications services, namely, routing calls, SMS messages, and push-notifications to local third-party motorized vehicle dispatchers in the vicinity of the caller using mobile phones; Telecommunication services, namely, electronic transmission of motor vehicle information, audio and video messages and data; Electronic transmission of data via a dedicated channel; Mobile telephone communications; Communication by E-mail, satellite, and VAN (value added network), namely, transmission of voice and data; Providing telecommunications connections and user access to a global computer network; Telecommunications, namely, receiving, coordinating and forwarding of remote calls on vehicle condition; Electronic transmission of text, audio, video, image, signals, position, movement and data between land vehicles, land vehicle components, data centers, phones, personal computers and other electronic and digital devices; Telematic transmission of information for the deployment of emergency assistance services, the automatic notification of air bag deployment, stolen vehicle tracking, remote vehicle diagnostics, remote vehicle door lock and unlock, remote vehicle horn and light activation, location and navigation assistance providing route support and directions.

Class 39: Travel clubs; vehicle parking; parking space reservation service; Providing real-time information concerning vehicle parking space availability; valet parking; providing customized driving instructions through use of an on-line parking reservation system; Booking of travel tickets; Making reservations and bookings for transportation; Transport, delivery, packaging, and storage of goods/parcels; GPS navigation services; Carpooling services, namely, matching drivers of motor vehicles with individuals needing rides; Chauffeur services; car rental; Vehicle-driving services; Providing customized driving directions; Providing on-line driving directions to the restaurants of others; Taxi transport; Organization of trips; Providing reviews of travel service providers; leasing of cars; Fuel delivery services; Passenger transport; Providing information about automobiles for lease by means of the Internet; car rental club; Motor vehicle sharing services, namely, providing temporary use of motor vehicles; transportation information; Providing travel information to travellers regarding fares, timetables and public transport; Coordinating travel arrangements for individuals and for groups; Providing a website featuring information regarding transportation services and bookings for transportation services; Providing a portal which is accessible by customers via a mobile device and website to provide access to functions relating to navigation; Mobile information services, namely, traffic information and directional guidance to motor vehicle operator; Information services, namely, providing news in the field of travel and traffic information; Providing information in the nature of GPS navigation services and travel route planning regarding the location and availability of gasoline and electric charging stations for vehicles.

Class 42: Providing a web site featuring technology that enables users to connect with other people in their neighbourhood or city for any number of user-specified reasons, including providing a service or organizing an event; Computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, engage in social networking; Computer services, namely, hosting on-line interactive public calendars that allow multiple participants to share event schedules and facility reservations; Providing a web site featuring technology that enables users to share, bookmark, index, store, collect and showcase content, articles, images, calendars, products, projects, and other information resources in electronic form; Providing a website featuring information about green transportation and travel; Providing temporary use of online non-downloadable software for providing transportation services, bookings for transportation services and dispatching motorized vehicles to customers; Providing virtual computer systems and virtual computer environments through cloud computing for use in connection with motor land vehicles; Mobile information services, namely, weather information; Vehicle diagnostic services, namely, providing vehicle diagnostic information, vehicle mileage, vehicle maintenance needs, vehicle diagnostic readings and diagnostic trouble codes to drivers and car dealers regarding vehicles via cellular technology; Application service provider (ASP) services featuring software that enables drivers to play and program audio, video, text and multimedia content; Hosting an online community website featuring information about vehicles; Online system management services that allow users to remotely view, monitor, program, operate and control motor vehicle systems for others; Remote monitoring of electric battery charging systems used in land vehicles; Providing an inspection program for pre-owned vehicles; Automobile diagnostic services, namely, providing interactive information concerning the status and power of vehicles via mobile phones and computer networks and monitors; on-line system management services that allow users to remotely program the time for turning on air conditioners and other features in vehicles via mobile phones and the Internet.

The contested goods are the following:

Class 9: Recorded content; Information technology and audiovisual apparatus; Magnets, magnetizers and demagnetizers; Regulated power supply apparatus; Apparatus, instruments and cables for electricity; Optical devices, enhancers and correctors; Security, safety, protective and signalling apparatus and equipment; Diving equipment; Navigation, guidance, tracking, targeting and map making devices; Measuring, detecting and monitoring instruments, indicators and controllers; Scientific research and laboratory apparatus, educational apparatus and simulators; Parts and accessories for all the aforesaid goods, included in this class; Telephones; apps; widgets; Software; Hardware.

Class 12: Apparatus for locomotion by land, air or water, and parts and fittings therefor; Vehicles and parts and fittings therefor.

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 opponent’s list of goods and services, indicates that the specific 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).

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.

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 in class 9:

Class 9For all the goods except Telephones; apps; widgets; Software; Hardware (?)

The contested software; recorded content include, as broader categories, the opponent’s computer software for wireless content delivery; all of the above integrated into motor vehicles. Since the Office cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Widgets are modules or interfaces in a device that allow users to access information or to perform an action and thus effectively consist of software applications or components made for one or more different software platforms. Therefore, the contested widgets and the contested apps concern different types of software applications which can include, or overlap with, the opponent’s mobile application software for connecting drivers and passengers; all of the above integrated into motor vehicles. Since the Office cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested navigation, guidance, tracking, targeting and map making devices includes, as a broader category, the opponent’s global positioning system (GPS); all of the above integrated into motor vehicles. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The broad category of the contested information technology apparatus include goods such as navigation apparatus for vehicles [on-board computers] and are therefore identical to the opponent’s global positioning system (GPS); all of the above integrated into motor vehicles.

The broad category of the contested hardware includes the opponent’s wireless transmission and receiving equipment for use in connection with remote computers for use in automobiles for tracking, monitoring and diagnosing vehicle maintenance and for providing information to drivers; all of the above integrated into motor vehicles. Therefore, they are identical.

The contested regulated power supply apparatus are similar to a high degree to the opponent’s charging stations for charging electric vehicles; all of the above integrated into motor vehicles since they can target the same relevant public, share the same distribution channels and are produced by the same undertakings. Furthermore, they are complementary.

The contested scientific research and laboratory apparatus are similar to the opponent’s diagnostic apparatus consisting of sensors for use in testing vehicle function and in diagnosing vehicle electrical and mechanical problems, integrated into a motor vehicle since the broad category of the contested goods may also include such goods for vehicle development and testing and can therefore target the same relevant public, share the same distribution channels and be produced by the same undertakings.

The broad categories of the contested audiovisual apparatus; telephones; optical devices, enhancers and correctors and measuring, detecting and monitoring instruments, indicators and controllers, which may all include goods for use in vehicles are at least similar to the opponent’s software and computer hardware, namely, sensors, computers, and wireless transceivers to provide connectivity within the vehicle, between vehicles, with cell phones, and with data centers, in addition to tactile, audible, and visual interfaces to interact with occupants of the vehicle; all of the above integrated into motor vehicles as they can target the same relevant public, share the same distribution channels and be produced by the same undertakings. Furthermore, at least some of these goods can also be complementary.

The contested apparatus, instruments and cables for electricity are similar to the opponent’s motor land vehicles in Class 12 since they can target the same relevant public and share the same distribution channels. Furthermore, they can also be complementary.

The contested parts and accessories for all the aforesaid goods, included in this class [recorded content; information technology and audiovisual apparatus; regulated power supply apparatus; apparatus, instruments and cables for electricity; optical devices, enhancers and correctors; navigation, guidance, tracking, targeting and map making devices; measuring, detecting and monitoring instruments, indicators and controllers; scientific research and laboratory apparatus], to the extent that they may include parts and accessories are at least similar to the opponent’s goods used in the respective comparisons made above since they can include goods that at least target the same relevant public, share the same distribution channels and are produced by the same undertakings.

However, the contested magnets, magnetizers and demagnetizers; parts and accessories for all the aforesaid goods, included in this class are magnets or devices (as well as parts and accessories) used to make a substance or object magnetic or to reduce or remove magnetic properties and the contested diving equipment; parts and accessories for all the aforesaid goods, included in this class refer to apparatus and instruments (as well as parts and accessories) used for underwater activities. These contested goods as well as the contested educational apparatus and simulators; parts and accessories for all the aforesaid goods, included in this class are dissimilar to all of the opponent’s goods and services in Classes 9, 12, 37, 38, 39 and 42 as they have nothing relevant in common. The goods and services under comparison do not have the same nature or purpose and they are neither in competition with each other nor complementary. In addition, they do not target the same relevant public and are not commonly produced or provided by the same undertakings nor do they have the same distribution channels.

Likewise, the contested security, safety, protective and signaling apparatus and equipment; parts and accessories for all the aforesaid goods, included in this class consist of alarms and warning equipment (but not for vehicles), access control devices, signalling apparatus and protective and safety equipment (as well as parts and accessories therefor) which do not have any direct relationship with the opponent’s goods in Classes 9 and 12 or services in Classes 37, 38, 39 and 42. Therefore, for the same reasons as those outlined above, these contested goods are also dissimilar to all the opponent’s goods and services.

The contested goods in class 12:

Parts and fittings for vehicles are identically included in both lists of goods.

The contested parts and fittings therefor [apparatus for locomotion by land, air or water] are identically covered by the opponent’s parts and fittings for vehicles, which also include parts and fittings for land, air or water vehicles.

Class 12Class 12

The contested apparatus for locomotion by land; vehicles include, as broader categories, the opponent’s motor land vehicles. Since the Office cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested apparatus for locomotion by air or water are similar to the opponent’s parts and fittings for vehicles, which as mentioned above, include parts and fittings for air or water vehicles and can therefore target the same relevant public, share the same distribution channels and be produced by the same undertakings. Furthermore, they can be complementary.

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 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 specialised nature of the goods, frequency of purchase and their price. For example, in the case of vehicles for locomotion by land, air, water or rail, since these goods are usually expensive, 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, 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).

c) The signs

INMOTION	JOY IN MOTION
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.

As regards the earlier mark, although it is composed of one verbal element, 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).

Therefore, the common verbal element ‘IN(/)MOTION’, despite being written as one or two separate words in the earlier mark and the contested sign respectively, is meaningful in certain territories, for example in those countries where English is understood. English speakers will break down the single verbal element ‘INMOTION’ of the earlier mark into the two elements ‘IN’ and ‘MOTION’, since both words have clear concepts, while they would perceive the element written in two words in the contested sign, the same way. This part of the public in the relevant territory will perceive the sign as referring to something that is ‘moving’ (information extracted on 18/03/2019 from https://en.oxforddictionaries.com/definition/in_motion). Bearing in mind that some of the relevant goods are vehicles or vehicle-related apparatus or systems, whose purpose is to move, the Opposition Division agrees with the applicant that this element has a low level of distinctiveness for these goods in question for the English-speaking part of the public in the relevant territory.

However, the verbal elements ‘INMOTION’ and ‘IN MOTION’ respectively as well as the additional word ‘JOY’ in the contested sign are distinctive to a normal degree in so far as the non-English speaking part of the public is concerned because they will all be perceived as meaningless.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public.

Visually, the signs coincide in the letters ‘INMOTION’, which form the whole of the earlier mark and are only differentiated by a space between the letters ‘IN’ and ‘MOTION’ in the contested sign. The signs also differ in the additional shorter verbal element ‘JOY’ present at the beginning of the contested sign.

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

Aurally, irrespective of the different pronunciation rules in different languages spoken by the relevant public under analysis, the signs coincide in the identical pronunciation of the verbal element ‘IN/MOTION’, since the additional space in the contested sign will not produce any aural difference between them. However, the pronunciation differs in the sound of the additional shorter verbal element ‘JOY’ present at the beginning of the contested sign, which has no counterpart in the earlier mark.

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

Conceptually, neither of the signs has a meaning for the public under analysis 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.

c) 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 trade mark has a reputation in the European Union in connection with all the goods and services for which it is registered. The Opposition Division considers that for reasons of procedural economy, at this point, it is not necessary to further examine the opponent’s claim of enhanced distinctiveness as the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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 under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

d) 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, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

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).

In the present case, the goods at issue are partly identical, partly similar to varying degrees and partly dissimilar and the degree of attention of the relevant public may vary from average to high.

The earlier mark has a normal degree of distinctiveness for the relevant public under analysis. The marks are visually and aurally similar to an average degree. Moreover, for the part of the public under analysis, they do not have a concept that might otherwise help to more easily differentiate them. Taking into account 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) and that 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), the differences between the signs as detailed above are not sufficient to outweigh their overwhelming similarities so as to exclude a likelihood of confusion in relation to the goods that have been found identical or similar to varying degrees.

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 sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In the view of all the foregoing, there is a likelihood of confusion on the non-English-speaking part of the public in the relevant territory, even if the public under analysis may pay a high degree of attention in relation to some of the goods concerned . 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.

The applicant claims that the earlier mark is a re-filing of previous marks and that the opponent has therefore filed the earlier mark in bad faith and furthermore argues that the earlier mark is also non-distinctive and refers to some other applications consisting of or containing 'INMOTION' that were refused by the Office on absolute grounds. However, the Opposition Division notes that the opponent’s mark, European Union trade mark registration No 14 292 783, is registered and in force and there is no cancellation action pending against this mark. Therefore, these arguments of the applicant must be set aside as irrelevant for the purposes of the present proceedings.

In its observations, the applicant also refers to two previous decisions of the General Court and three previous decisions of the Boards of Appel to support its arguments that there is no likelihood of confusion. Their reasoning and outcome should be duly considered when deciding upon a particular case.

However, the previous cases referred to by the opponent are not relevant to the present proceedings. In the previous decisions of the General Court, the earlier trade mark presented a low distinctiveness that reduced its scope of protection and constituted one of the factors leading to no likelihood of confusion (22/06/2010, T-490/08, Carbon Capital Markets, EU:T:2010:250) or was formed of at least a part of characters of weak distinctiveness, while the marks in question were easily differentiated by dissimilarities in their distinctive characters (29/01/2015, T-665/13, SPIN BINGO, EU:T:2015:55). In the invoked previous decisions by the Boards of Appeal, the trade marks either presented a strong conceptual dissimilarity neutralizing the existing similarities between the signs (see decision of 05/12/2013, R-2141/2012-1, ‘McPatent/M Patent’) or presented clear differences in distinctive elements (see decision of 09/10/2007
04/05/2004, R-429/2003-2, ‘Copabana Sunrise / Sunrise’), despite the coincidence in some elements considered of weak distinctiveness (see the decision of R-0486/2006-1, ‘Aston Martin Heritage/Heritage’); none of the above being the case in the present proceedings for the reasons explained above.

Therefore, the circumstances of the previous cases referred to by the applicant are not comparable to the circumstances relevant to the present proceedings and are therefore not of such a nature as to change the finding reached above, namely that there is a likelihood of confusion on the part of the non-English-speaking public in the relevant territory in relation to the signs in dispute in the case at hand.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

The remaining contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to reputation, the outcome of the likelihood of confusion remains the same and it could not change the outcome in respect of dissimilar goods.

Finally, for the sake of completeness, the Opposition Division notes that the opponent also argues that the applicant is linked to other applicants known by the EU General Court for conducting unlawful filing strategies with an aim to create a continual chain of priority with the ultimate purpose of opposing subsequent EU trade mark applications and requesting a substantial payment to settle the opposition and also submitted register extracts of ten German applications for the mark 'JOY IN MOTION', all of which were deemed to have been withdrawn before proceeding to registration. These claims are disputed by the applicant. In this respect, suffice it to note that bad faith is not a ground for opposition and cannot therefore, in any event, change the finding reached above, namely that there is no likelihood of confusion under the provisions laid down by Article 8(1)(b) in relation to the remaining contested goods, which are dissimilar to the opponent’s goods and services. Therefore, these arguments of the opponent must be set aside as irrelevant to the present proceedings.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent claimed reputation in relation to earlier EUTM registration No 14 292 783.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it, the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The opponent submitted evidence to support this claim on 05/01/2018. The evidence consists, in particular, of a few extracts with some information about details of the INMOTION mark and its presence in the transportation and mobility sector without providing any information about the extent of recognition of the earlier trade mark by the relevant public. Therefore, from the evidence submitted it is insufficient to prove that the earlier mark acquired reputation within the meaning of Article 8(5) EUTMR.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

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

Sam GYLLING

Begoña URIARTE VALIENTE

Alexandra APOSTOLAKIS

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.