OPPOSITION No B 3 022 780

Exercycle, S.L., C/ Zurrupitieta 22, Pol. Ind. Jundiz, 01015 Vitoria-Gasteiz (Álava), Spain (opponent), represented by Cuatrecasas Gonçalves Pereira Propiedad Industrial, S.R.L., C/ Almagro 9, 28010 Madrid, Spain (professional representative)

a g a i n s t

Trolo scooter s.r.o., Slavojova 579/9, 12800 Praha, Czechia (applicant), represented by Pavel Cink, Veleslavínova 33, 30100 Plzeň, Czechia (professional representative).

On 11/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 022 780 is partially upheld, namely for the following contested goods:

Class 9: Head protection; protective helmets for sports; helmets for use in sports.

Class 12: Electric bicycles; bicycles; pedal scooters; bells for motorcycles; cycle bells; metal bells for bicycles; pushchairs; harnesses for prams; pushchair covers; perambulators incorporating carry cots; baskets for perambulators; rubber baby buggy bumpers; harnesses for use with pushchairs; fold-up pushchairs; fitted footmuffs for prams; pushchairs for use with carry cots; bags adapted for pushchairs; pushchair covers and hoods; infants’ carriages with removable infant supports; vehicle safety harnesses for pram bodies; fitted pushchair mosquito nets; convertible car seats; children’s car seats; portable children’s seats for vehicles; safety seats adapted for use by children in vehicles; handlebars; bicycle handlebars; front forks for cycles; fork crown covers [bicycle parts]; wheelbarrows; wheels; car safety seats for children.

Class 28: Roller skates; in-line roller skates; gloves made specifically for use in playing sports; protective padding for sports; sportballs; sports equipment; lifting grips for weight lifting.

2. European Union trade mark application No 17 377 508 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 17 377 508 for the figurative mark , namely against all the goods in Classes 9, 12 and 28. The opposition is based on European Union trade mark registration No 14 294 516 for the word mark ‘BLADEZ’. 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.

a) The goods and services

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

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

Class 28: Gymnastic and sporting articles not included in other classes.

Class 35: Business administration; wholesaling and retailing, including sale via the internet, of bicycles and parts therefor, gymnastic and sporting articles; wholesaling and retailing, including sale via the internet, of training, exercise and muscle-building machines, including stationary exercise bicycles, rowing machines, running machines, step machines; wholesaling and retailing services, including sale via the internet, of clothing and footwear for sports and leisure; wholesaling and retailing, including sale via the internet, of photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; wholesaling and retailing services, including sale via the internet, of sunglasses and sports goggles; wholesaling and retailing services, including sale via the internet, of helmets for sports; wholesaling and retailing services, including sale via the internet, of bicycle computers and speedometers; wholesaling and retailing, including sale via the internet, of pulsometers, pedometers, electrostimulators, electronic and digital body-fat measuring devices; wholesaling and retailing services, including sale via the internet, of massage apparatus and implements; wholesaling and retailing services, including sale via the internet, of cabinets for saunas and Turkish baths.

The contested goods are the following:

Class 9: Head protection; protective helmets for sports; helmets for use in sports.

Class 12: Electric bicycles; bicycles; pedal scooters; bells for motorcycles; cycle bells; metal bells for bicycles; pushchairs; harnesses for prams; pushchair covers; perambulators incorporating carry cots; baskets for perambulators; rubber baby buggy bumpers; harnesses for use with pushchairs; fold-up pushchairs; fitted footmuffs for prams; pushchairs for use with carry cots; bags adapted for pushchairs; pushchair covers and hoods; infants’ carriages with removable infant supports; vehicle safety harnesses for pram bodies; fitted pushchair mosquito nets; convertible car seats; children’s car seats; portable children’s seats for vehicles; safety seats adapted for use by children in vehicles; handlebars; bicycle handlebars; front forks for cycles; fork crown covers [bicycle parts]; wheelbarrows; wheels; car safety seats for children.

Class 28: Scooters [toys]; roller skates; in-line roller skates; gloves made specifically for use in playing sports; toy pushchairs; toys for use in perambulators; carriages for dolls; toys; protective padding for sports; sports games; sportballs; sports equipment; lifting grips for weight lifting; toy vehicles.

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 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).

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 applicant claimed that it primarily provides goods in the sale of scooters, bicycles and accessories thereto, in-line roller skates, pushchairs and protective equipment for sports and pushchairs. The applicant further argued that these goods have no connection to the goods of the opponent, which are primarily equipment for fitness centres, such as treadmills, exercise bikes, bikes for spinning, strength training equipment, rowing machines and accessories for spa, and that this is a completely different area of sport equipment to the one in which the applicant is engaged. However, in the absence of the obligation to prove use of the earlier mark, the goods and services to be compared are those registered/applied for and not the ones used in the market (17/01/2012, T‑249/10, Kico, EU:T:2012:7, § 23). Therefore, the applicant’s arguments should be set aside.

Contested goods in Class 9

The contested protective helmets for sports; helmets for use in sports are closely connected to the opponent’s gymnastic and sporting articles not included in other classes in Class 28. The contested goods may also be considered as sporting articles that will be found in the same sports shops as the opponent’s goods and may originate with the same producer. These goods are therefore similar (08/09/2010, T‑152/08, Scorpionexo, EU:T:2010:357, § 55; 18/01/2018, R 355/2017‑1, LIGHTNING BOLT / LIGHTNING BOLT el al., § 30).

The contested head protection is similar to a low degree to the opponent’s gymnastic and sporting articles not included in other classes in Class 28 as they are sold through the same distribution channels and may be produced by the same producers as the respective sporting articles. They also target the same relevant public.

Contested goods in Class 12

The contested electric bicycles; bicycles; pedal scooters; pushchairs; perambulators incorporating carry cots; fold-up pushchairs; pushchairs for use with carry cots; wheelbarrows are included in the broad category of the opponent’s vehicles. Therefore, they are identical.

The contested bells for motorcycles; cycle bells; metal bells for bicycles; harnesses for prams; pushchair covers; baskets for perambulators; rubber baby buggy bumpers; harnesses for use with pushchairs; fitted footmuffs for prams; bags adapted for pushchairs; pushchair covers and hoods; infants’ carriages with removable infant supports; vehicle safety harnesses for pram bodies; fitted pushchair mosquito nets; convertible car seats; children’s car seats; portable children’s seats for vehicles; safety seats adapted for use by children in vehicles; handlebars; bicycle handlebars; front forks for cycles; fork crown covers [bicycle parts]; wheels; car safety seats for children are similar to the opponent’s vehicles. All these goods are parts of vehicles and are therefore complementary. In addition, they target the same public and are sold through the same distribution channels. Furthermore, they might also come from the same producers.

Contested goods in Class 28

The contested roller skates; in-line roller skates; gloves made specifically for use in playing sports; protective padding for sports; sportballs; sports equipment; lifting grips for weight lifting are included in the broad category of the opponent’s gymnastic and sporting articles not included in other classes. Therefore, they are identical.

However, the contested scooters [toys]; toy pushchairs; toys for use in perambulators; carriages for dolls; toys; sports games; toy vehicles are dissimilar to the opponent’s goods and services in Classes 12, 28 and 35. In particular, the contested goods and the opponent’s gymnastic and sporting articles not included in other classes in Class 28 are dissimilar (04/06/2013, T‑514/11, Betwin, EU:T:2013:291, § 36‑39). Although certain sporting articles can be used for games and certain toys can also be sporting articles, such an assumption does not call into question the fact that the intended purpose of those two categories of goods is essentially different. Even if, by their nature, these two categories of goods are meant to entertain the public, they also serve other purposes. Gymnastic and sporting articles are intended to train the body through physical exercise, whereas toys, including inflatable toys, games, playthings and novelties are intended first and foremost to entertain their users. With respect to whether these goods have the same distribution channels, the above-cited judgment states that, like all other types of goods, all the goods at issue can now be found in large retail stores. However, at such sales points, the opponent’s gymnastic and sporting articles and the contested toys, games, playthings and novelties are sold in specialised sections that, despite possibly being close to each other, are nonetheless separate. They are also dissimilar to the opponent’s goods and services in Classes 12 and 35. These goods and services are of a different nature. In addition, their purposes and methods of use are different, and they differ in their end users, distribution channels and producers. Finally, they are neither in competition with nor complementary to each other.

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.

The goods found to be identical or similar target the public at large and business customers with specific professional knowledge or expertise in the automotive sector (those goods in Class 12).

The degree of attention will vary from average to high. In particular, taking into consideration the price of cars, 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 car, either new or second-hand, in the same way as they would buy articles purchased daily. 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

BLADEZ
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 trade mark is the word ‘BLADEZ’. The contested sign is a figurative mark consisting of the two words ‘BLADE’ and ‘SPORT’ written one above the other. As regards the word ‘BLADE’, the letters ‘BL*DE’ are in black upper case outlined in white (except the letter ‘e’, which is in lower case), whereas the letter ‘a’ is in blue lower case. As regards the word ‘SPORT’, the letters are in smaller and thinner blue upper case.

The word ‘BLADE’, which is present in the contested sign and which might also be perceived in the earlier mark, is an English word meaning ‘the blade of a knife, axe, or saw is the edge, which is used for cutting.’ (information extracted from Collins English Dictionary, on 23/01/2019 at https://www.collinsdictionary.com/es/diccionario/ingles/blade). This element is distinctive in relation to most of the goods, although it might be perceived as weak in relation to some vehicles, in particular, helicopters, as a helicopter rotor system is the combination of several rotor blades. However, this word is meaningless and distinctive for the non-English-speaking part of the public.

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.

Considering that the common element ‘BLADE’ might be seen as weak for part of the public, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, because this will increase the similarity between the signs.

‘BLADEZ’ is meaningless and distinctive in relation to the relevant goods.

The contested sign’s element ‘SPORT’ is a basic English word that will be associated by the entire relevant public with sport (17/04/2018, R 1894/2017-5, DELTA SPORT (fig.) / DELTA (fig.) et al., § 49). This element is non-distinctive in relation to the goods at issue as they are related to the field of sport. Indeed, even parts and fittings of vehicles in Class 12 are related to sport, as these goods may be manufactured for sport vehicles.

Considering its size and its position, ‘BLADE’ is the contested sign’s dominant element.

Visually, the signs coincide in the string of letters ‘BLADE’ and differ in the additional letter ‘Z’ of the earlier mark, as well as in the additional word element ‘SPORT’ and the typeface of the contested sign.

The applicant highlighted these differences, stating that ‘its trade mark application applies for a combined, more specifically word and figurative, trade mark, consisting of more than one word element, rather than only of one word element, ‘BLADE’, which is supplemented by another word element, ‘SPORT’. The above is the first significant difference between the claimed trade mark and the published trade mark.’

Nevertheless, the Opposition Division disagrees and considers that these differences should not be overrated. As regards the differences stemming from the contested sign’s typeface, when a trade mark contains verbal and figurative elements, 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; 19/12/2011, R 233/2011‑4, BEST TONE (FIG MARK.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59).

Moreover, the additional word ‘SPORT’ is non-distinctive and clearly less dominant.

Finally, as regards the difference due to the additional letter ‘Z’, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. The fact that ‘BLADE’ constitutes the beginning of both marks enhances the similarity.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs’ pronunciation coincides in the sound of the letters ‘BLADE’, present in both signs, and differs in the sound of the additional letter ‘Z’.

As regards the aural impact of the element ‘SPORT’, the Opposition Division disagrees with the applicant’s observations and considers that the influence of ‘SPORT’ is extremely limited. The General Court has already pointed out that only the dominant part of the mark would normally be pronounced when enunciated by consumers (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 44; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55) and that consumers do not tend to pronounce non-distinctive verbal elements (04/02/2013, T‑159/11, Walichnowy Marko, EU:T:2013:56, § 44).

Given the foregoing, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The word ‘SPORT’ is the sole meaningful element of the marks at issue. However, ‘SPORT’ is non-distinctive for the goods in question, and, therefore, it has no influence in the present assessment (04/02/2013, T‑159/11, Walichnowy Marko, EU:T:2013:56, § 45). 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.

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 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

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).

The signs at issue are visually similar to an average degree, aurally highly similar, and the conceptual similarity has no impact in the present comparison. The contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods and services.

The targeted public is composed of both the general public and business customers. The degree of attention will vary from average to high.

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).

The signs are similar overall, insofar as the dominant and distinctive element of the contested sign is the initial part of the earlier mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

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

Nicole CLARKE

Birgit FILTENBORG

Marine DARTEYRE

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.