OPPOSITION No B 3 014 894

Consolidated Artists B.V., Lijnbaan 68, 3012 EP, Rotterdam, The Netherlands (opponent), represented by Cabinet Degret, 24, place du Général Catroux, 75017, Paris, France (professional representative)

a g a i n s t

Bigline b.v., Ambachtsweg 2, 3542dg, Utrecht, The Netherlands (applicant).

On 13/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 014 894 is upheld for all the contested goods.

2. European Union trade mark application No 17 297 623 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 297 623 ‘Mango’. The opposition is based on, inter alia, European Union trade mark registration No 9 850 785 . 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.

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 9 850 785.

1. The goods

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

Class 9: Sunglasses, sport glasses; satellite navigation apparatus; navigation apparatus for vehicles (on-board computers); electric batteries; protective clothing and shoes against accidents, radiation and fire; protective helmets and masks; hands-free kits for phones.

Class 25: Outerclothing and underwear for men, women and children.

The contested goods are the following:

Class 12: Bicycles; Electric bicycles.

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.

The contested goods are bicycles. The opponent’s goods in Class 25 are clothing- items (Outerclothing and underwear) that may include also sport clothing for cycling and as such can be used for bicycle activities or bicycle sports. Although the goods under comparison have different natures and purposes, they are available next to each other in the same shops and target the same consumers. They may also come from the same undertakings (i.e. bicycle producers also sell special clothing such as bike gloves, bike jerseys or tights). Furthermore, there is a complementary link between the goods because effectiveness and comfort are important for bicycles (i.e. in the case of sports or cycling jerseys, the special fabrics allow breathability and moisture control, thus more comfortable or in case of sports leggings, these are particularly important for cycling since they are more likely not to entangle in the bike chain). All this has also been confirmed in the decision of the Boards of Appeal of 18/01/2014, R 255/2013-1, §19-30.

Therefore, there is a low degree of similarity between the contested bicycles, electric bicycles and the opponent’s outerclothing and underwear for men, women and children.

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 similar to a low degree are directed at the public at large.

The degree of attention may vary from average to higher than average, depending on

the price and the degree of sophistication of the goods.

3. The signs

	Mango
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 word ‘mango’ included in both signs will be associated with an edible tropical fruit. This word has no meaning in relation to the relevant goods at hand and is therefore considered to be distinctive to an average degree.

Visually, the signs coincide in the word ‘mango’. They differ in the slightly stylized letters of the earlier mark, which however have a limited impact on the overall impression created by the earlier mark.

Therefore, the signs are visually highly similar.

Aurally, the marks are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to an edible tropical fruit, the signs are conceptually identical.

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

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 have been found similar to a low degree. They are directed at the public at large and the degree of attention will vary from average to high. The earlier mark has a normal degree of inherent distinctiveness.

The signs are visually similar to a high degree and are aurally and conceptually identical as they coincide in a distinctive verbal element ‘MANGO’. In fact, the only difference between the signs is in the slight stylization of the otherwise standard letters of the earlier mark. As mentioned above, this difference is mainly decorative and will be paid less attention. Therefore, the difference is not enough to guarantee the safe differentiation of the conflicting signs by the relevant public.

The differences between the signs are not sufficient to counterbalance the degree of similarity between them even though the goods are only similar to a low degree. The relevant public, even if paying a higher than average degree of attention, may believe that the goods come from the same undertaking or, at least, economically linked undertakings, particularly in the belief that the contested mark is a mere sub-brand of the earlier sign.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 850 785. 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the mentioned earlier right 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Oana-Alina STURZA

Janja FELC

Claudia ATTINÀ

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.