OPPOSITION No B 3 047 404

Real Automovil Club De España, Isaac Newton, 4 Parque Tecnológico de Madrid (PTM), 28760 Tres Cantos (Madrid), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

BR Motorsport Comercio, Importaçao E Exportaçao Ltda, Alameda Tocantins, nº 764 – Alphavile Industrial, 06455-020 Barueri, Brazil (applicant), represented by Simões, Garcia, Corte-Real & Associados – Consultores, Lda., Rua Castilho, 167, 2º andar, 1070-050 Lisbon, Portugal (professional representative).

On 26/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 404 is upheld for all the contested goods.

2. European Union trade mark application No 17 583 808 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 17 583 808 . The opposition is based on Spanish trade mark registration No 3 551 123 of the figurative mark . 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

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; correcting lenses; spectacles; sunglasses; clip-on sunglasses; contact lenses; lenses, glasses, frames, sidepieces, chains and cords for spectacles and sunglasses; covers and cases adapted for optical apparatus and products; covers and cases for spectacles, sunglasses and contact lenses; holders for spectacles and sunglasses; covers, carriers and bags adapted for computers, telephones, electronic agendas, radios and portable media players; accelerometers; acid hydrometers; batteries, electric, for vehicles; aerometers; agendas (electronic -); anti-theft warning apparatus; alcoholmeters; mouse pads; ammeters; calibrating rings; aerials; speed checking apparatus for vehicles; global positioning system [GPS] apparatus; navigation apparatus for vehicles [on-board computers]; vehicle radios; radio pagers; precision measuring apparatus; telephone apparatus; life saving apparatus and equipment; beacons, luminous; batteries, electric; compasses (directional -); starter cables for motors; junction boxes [electricity]; gauges; shoes for protection against accidents, irradiation and fire; signal bells; battery chargers; chargers for electric batteries; headphones; protective helmets; protective helmets for sports; life jackets; life belts; traffic cones; cell phone straps; milage recorders for vehicles; revolution counters; densimeters; reflecting discs for wear, for the prevention of traffic accidents; steering apparatus, automatic, for vehicles; balancing apparatus; gasometers [measuring instruments]; gloves for protection against accidents; gloves for divers; hardware; pressure in vehicle tires [tyres] (automatic indicators of low -); gasoline gauges; slope indicators; electric loss indicators; temperature indicators; vacuum gauges; speed indicators; water level indicators; theft prevention installations, electric; hands free kits for phones; limiters [electricity]; signal lanterns; safety tarpaulins; flashing lights [luminous signals]; protective masks; USB flash drives; modems; signalling panels, luminous or mechanical; vehicle steering apparatus, automatic; pointers (light-emitting electronic -); radar apparatus; nets for protection against accidents; safety nets; life nets; voltage regulators for vehicles; knee-pads for workers; life buoys; whistle alarms; signalling whistles; simulators for the steering and control of vehicles; computer keyboards; teleprompters; thermostats for vehicles; electronic pocket translators; clothing for protection against accidents, irradiation and fire; anti-dazzle and anti-glare visors; downloadable electronic publications; electronic publications recorded on computer media; computer software applications, downloadable.

Class 25: Clothing; footwear; headgear; aprons [clothing]; masquerade costumes; overalls; belts (money -) [clothing]; kerchiefs [clothing]; pocket squares; shoulder scarves; garments for protecting clothing; motorists' and motorcyclists' clothing; uniforms; wedding gowns.

The contested goods are the following:

Class 9: Helmets and protective equipment for motorcyclists, including goggles for motorcyclists and cyclists.

Class 25: Leather clothing, footwear and headgear for motorcyclists; Sports clothing, footwear and headgear; Motorcycle clothing; Rainproof clothing; Coats; Motorcycling and cycling gloves.

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.

Contested goods in Class 9

The contested helmets for motorcyclists are included in the broad category of the opponent’s protective helmets. Therefore, they are identical.

The contested protective equipment for motorcyclists, including goggles overlap with the broad category of the opponent’s gloves for protection against accidents, to the extent that these gloves are for motorcyclists. Therefore, they are identical. The fact that goggles are included in the applicant’s protective equipment does not change this, since the term including’, indicates that the specific goods 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). But in any event, they would be identical to the opponent’s protective masks.

Contested goods in Class 25

The contested leather clothing, footwear and headgear for motorcyclists; sports clothing, footwear and headgear are included in the broad category of the opponent’s clothing; footwear; headgear respectively. Therefore, they are identical.

The contested motorcycle clothing; rainproof clothing; coats; motorcycling and cycling gloves are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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 may vary from average to above average, considering that some of the goods in question, namely in the Class 9, are not everyday purchases and usually involve considerable consideration before purchase due to their connection with safety.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 is a figurative mark consisting of the word ‘RACE’ in italicised letters with a crown on top. Given the sheer size of the word ‘RACE’ vis-à-vis the image of the crown, this word clearly stands out as the dominant element of the earlier mark. The word ‘RACE’ is also distinctive, since it does not belong to the category of basic English words that a significant part of the relevant public in Spain would be familiar with. The crown, on the other hand, is a commonly used laudatory symbol of power, legitimacy, victory, triumph, honour and glory and, therefore, is lowly distinctive.

The contested sign is a figurative mark consisting of the words ‘RACE TECH’ in upper case black letters of a rather standard typeface with above a very abstract figurative element. The mark has no dominant element since none of these elements is clearly more eye-catching than the other, all being more or less of the same size.

However, as regards distinctiveness there is a difference between the elements. The sign’s figurative element will most likely be associated with the bended torso of a (motor) cyclist and perceived as a reference to the intended user of the contested goods. Therefore, it is of a limited distinctiveness. The same is true for the word ‘TECH’. The use of ‘tech’ as a shortened form for technology is customary, and has become part of general usage in word combinations such as ‘high-tech’ for ‘high technology’ and ‘biotech’ for ‘biotechnology’ (see 05/062003, R 646/2001-2, Hometech; 26/10/2001, R 26/2000-2, Solartech; 08/03/2001, R 502/2000-3, Sawtec) and T-260/03, 14/04/2005, Celltech, EU:T:2005:130, § 32 confirmed by C-273/05; 19/11/2014, T-138/13, Viscotech / Viscoplex, EU:T:2014:973, §77). Moreover, the English word ‘technology’ has a very similar equivalent in Spanish, namely the word ‘tecnología’ (R 06/07/2016, R 2277/2015-2, VulTech (fig.) / BULLTECH, § 32). Therefore, the word ‘TECH’, when used in relation to the contested goods, will be perceived as indicating that the goods are produced according to the latest technology. As a consequence, the word ‘TECH’ and the figurative element have less impact on the overall perception of the signs than the meaningless and, therefore distinctive, element, ‘RACE’.

Visually, the marks coincide in their most distinctive element ‘RACE’ and differ in their figurative elements and the verbal element ‘TECH’ of the contested sign. However, these differences do not have the effect that they offset the similarity conveyed by the common element ‘RACE’. Bearing in mind that the figurative elements will be perceived as purely decorative and are of limited distinctive character, the relevant Spanish consumers will not give them much attention. In general, it must be observed that in the case of signs which consist of both verbal and figurative components, in principle, the public 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.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Considering that the consumer generally pays greater attention to the beginning of a mark than to the end (T‑133/05 ‘Pam-Pim’s Baby-Prop’, EU:T:2006:247, § 51 and 28/10/2010, T‑131/09, ‘Botumax’, EU:T:2010:458, § 35) and that the word ‘TECH’ of the contested sign is of a limited distinctiveness, the relevant consumers will rather notice that the dominant verbal element of the earlier mark is repeated as the first and more distinctive element of the contested sign. Therefore, the signs must be considered visually similar to an above average degree.

Aurally, the signs coincide in the pronunciation of the two-syllable-word ‘RA-CE’. What differentiates them is the final single syllable ‘TECH’ of the contested sign. However, given its weak character and position after the word ‘RACE’, it will not receive the consumer’s immediate attention, which will fall on the mark’s first two syllable word RA-CE. Therefore, this differentiating element cannot prevent the finding of a high phonetic similarity.

Conceptually, the word that both signs have in common, ‘RACE’, has no meaning in Spanish in relation to the goods in question. Therefore, as a whole neither of the signs has a meaning for the public in the relevant territory. The signs differ in that the other elements, namely the crown in the earlier mark, the image of a (motor)cyclist and the word ‘TECH’ in the contested sign, do have a meaning for the Spanish public. However, these elements have a limited impact conceptually, since the crown will be perceived as reference to the quality of the goods and the image of the (motor)cyclist and the word ‘TECH’ allude to the intended user and nature of the goods respectively.

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

a) 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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

b) 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 (eleventh recital 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (see to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528 § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As it has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested goods were found identical to those of the earlier mark and the public’s level of attention may vary from average to above average. The marks in dispute have been found to be visually similar to an above average degree and aurally highly similar while the signs do not convey any clearly differentiating concepts that will aid the relevant consumers in distinguishing between them. Indeed, the differentiating elements will not have much of an impact on the overall perception of the signs, considering that they will be perceived as alluding to the quality, nature or intended user of the goods.

In the light of the foregoing, also taking into account the principle of interdependence mentioned above, the degree of similarity between the marks at issue is sufficient for it to be considered that sufficient for it to be considered that even a more attentive public is likely to confuse the marks or believe that the identical goods in question come from the same undertaking or, as the case may be, economically linked undertakings. For instance, a substantial part of the relevant public could reasonably believe that the goods offered under the contested sign distinguish different product lines coming from the same undertaking or from economically-linked undertakings as those bearing the earlier mark ‘RACE’.

Therefore, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark No 3 551 123. 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.

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

Edith Elisabeth VAN DEN EEDE

Adriana VAN ROODEN

Andrea VALISA

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.