OPPOSITION No B 3 014 159

Eloy Rafael Gimeno Lopez, Avda. del Rosario, 18C, 50410 Cuarte de Huerva (Zaragoza), Spain (opponent), represented by Ipamark S.L., Paseo de la Castellana, 72-1º, 28046 Madrid, Spain (professional representative)

a g a i n s t

Tiago Gonçalves, R das Palmeiras n29 R/C-A, P-2775-347 Parede, Portugal and Luis Costa, Largo António Soares n5 2ºDto, 2730-239 Leceia, Portugal (applicants)

On 25/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 014 159 is upheld for all the contested goods, namely

Class 25: Headgear; Clothing

2. European Union trade mark application No 17 242 215 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicants bear the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 242 215 for the word mark ‘Unik Edition Custom Motorcycles’, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 16 762 098 for the figurative mark and Spanish trade mark registration No 2 022 598 for the word mark ‘UNIK’. 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 registration No 16 762 098.

a) The goods

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

Class 9: Protective helmets for motor cyclists; Articles of protective clothing for wear by motorcyclists for protection against accident or injury.

Class 18: Rucksacks.

Class 25: Motorcyclists' clothing of leather; Motorcycle gloves; Motorcycle jackets; Blousons; Waterproof clothing; Waterproof trousers; Caps [headwear]; Baselayer tops; Thermally insulated clothing.

The contested goods are the following:

Class 25: Headgear; Clothing.

The contested headgear and clothing include, as broader categories the opponent’s caps [headwear] and motorcyclists' clothing of leather; motorcycle gloves; motorcycle jackets; blousons; waterproof clothing; waterproof trousers; baselayer tops; thermally insulated clothing respectively. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

	Unik Edition Custom Motorcycles
Earlier trade mark	Contested sign

The relevant territory is the European Union

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

The earlier mark consists of the word element ‘unik’ and a figurative element above it consisting of a number of dots in various shades of red with an added three-dimensional effect.

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 common element ‘unik’ (‘únik’) has a meaning in Slovak; furthermore, the elements ‘Edition Custom Motorcycles’ of the contested sign are meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The common element ‘unik’ has no meaning for the relevant public and is, therefore, distinctive.

The elements ‘Edition Custom Motorcycles’ of the contested sign will be understood as, for example, ‘a particular version of motorcycles made by special order’ by the relevant public. Bearing in mind that the relevant goods are ‘headgear and clothing’ which could include motorcyclists’ clothing and headgear, this element is weak for these goods.

The earlier mark has no element that could be considered clearly more dominant than other elements. It is composed of a distinctive verbal element and a less distinctive figurative element which serves only decorative purposes. Therefore, the verbal element is more distinctive than the figurative element.

Additionally, 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).

Visually and aurally, the signs coincide in the string of letters/phonemes ‘UNIK’. They differ in the elements ‘EDITION CUSTOM MOTORCYCLES’ present only in the contested sign. However, these elements are weak.

All four coinciding letters/phonemes are placed at the beginning of the signs. 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.

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

Conceptually, although the public in the relevant territory will perceive a clear meaning of the elements ‘Edition Custom Motorcycles’ of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

d) Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. 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.

e) Global assessment, other arguments and conclusion

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.

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, Sabel, EU:C:1997:528, § 22.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

There is a likelihood of confusion because the differences between the signs are confined to less distinctive or secondary elements and aspects. 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). Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, 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).

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 of the contested sign have been found identical to those of the earlier mark. They are directed at the public at large, whose degree of attention varies is average.

The signs are visually and aurally similar to an average degree on account of the sequence of four letters/phonemes they have in common, which is distinctive and placed at the beginning of the signs. The additional element ‘Edition Custom Motorcycles’, as stated above, is weak in relation to the relevant goods. It should be borne in mind 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).

Consequently, the Opposition Division is of the opinion that the contested mark can be perceived as a new, more developed version of the earlier mark.

Considering all the above, there is a likelihood of confusion on the part of the English-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 16 762 098. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 016 762 098 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Carlos MATEO PÉREZ

Tzvetelina IANTCHEVA

Monika CISZEWSKA

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.