OPPOSITION No B 3 063 787

Berg Toys Beheer B.V., Stevinlaan 2, 6716 WB, Ede, Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices. 2e étage Anna van Buerenplein 21A, 2595DA, Den Haag, Netherlands (professional representative)

a g a i n s t

Auxilium-Munich GmbH, Richard-Wagner-Str. 47, 82049, Pullach, Germany (applicant), represented by Andreas Baumgarten, Kirchenleite 22b, 82057, Icking, Germany (professional representative).

On 11/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 787 is partially upheld, namely for the following contested goods:

Class 12: Electric vehicles; Electrically operated scooters; Electric one wheel scooters; Scooters [vehicles]; Motor scooters; Bicycle trailers; Bicycles; Motorised bicycles; Folding bikes; Child carrying trailers; Luggage carriers for cycles; Bicycle seat posts; Electric bicycles; Folding electric bicycles.

2. European Union trade mark application No 17 910 608 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 910 608 ‘Bergfrei’ (word). The opposition is based on European Union trade mark registration No 6 446 439 , international trade mark registration No 743 692 designating, inter alia, Austria and Germany ‘BERG’ (word), and Benelux trade mark registration No 653 413 ‘BERG’ (word). 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 6 446 439 and international trade mark registration No 743 692 designating Germany and Austria.

1. The goods and services

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

European Union trade mark registration No 6 446 439:

Class 12: Means of transport, in particular wagons, push bikes, go-karts, electric vehicles, trailers, trailers for gokarts, tires, wheels, vehicle seats, shock absorbers, steering wheels and bumpers, excluding bicycles and children's bicycles; moving vehicles for children.

Class 28: Toys, including construction toys, moving toys, other moving playing equipment and trampolines.

Class 41: Education, providing of training, entertainment, sporting activities.

International trade mark registration No 743 692 designating Germany and Austria:

Class 12: Apparatus for locomotion by land.

Class 28: Go-carts (toys), toy cars, carts (toys), toy trailers, toy wheelbarrows, toy tip-up carts, scooters (toys), toy excavators, toy liquid manure tanks, toy tow trucks.

The contested goods and services are the following:

Class 12: Electric vehicles; Electrically operated scooters; Electric one wheel scooters; Scooters [vehicles]; Motor scooters; Bicycle trailers; Bicycles; Motorised bicycles; Folding bikes; Child carrying trailers; Luggage carriers for cycles; Bicycle seat posts; Electric bicycles; Folding electric bicycles.

Class 28: Snowboards; Bindings for snowboards.

Class 39: Rental of cycles.

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 ‘in particular’ and ‘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).

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 12

The contested electric vehicles; electrically operated scooters; electric one wheel scooters; scooters [vehicles]; motor scooters; bicycles; motorised bicycles; folding bikes; electric bicycles; folding electric bicycles are included in the broad category of the opponent’s apparatus for locomotion by land of the earlier International trade mark registration No 743 692. They are identical.

The contested bicycle trailers; child carrying trailers are included in the broad category of the opponent’s means of transport, in particular wagons, push bikes, go-karts, electric vehicles, trailers, trailers for gokarts, tires, wheels, vehicle seats, shock absorbers, steering wheels and bumpers, excluding bicycles and children's bicycles of the European Union trade mark registration No 6 446 439. They are identical.

The contested luggage carriers for cycles; bicycle seat posts are similar to the opponent’s apparatus for locomotion by land of the earlier International trade mark registration No 743 692. The goods have the same producers, distribution channels and they are directed at the same consumers. They are also complementary.

Contested goods in Class 28

The contested snowboards; bindings for snowboards are considered dissimilar to all of the opponent’s goods or services. The goods and services have different purposes, natures and methods of uses. They do not coincide in producers and the relevant public. They are not complementary nor in competition. In particular, the opponent’s bicycles covered by apparatus for locomotion by land of the earlier International trade mark registration No 743 692 are means of transport, and so not similar to sporting equipment such as the contested snowboards. They do not have the same natures, purposes and the relevant public and distribution channels are not be the same.

Contested services in Class 39

The contested rental of cycles is considered dissimilar to any of the opponent’s goods or services. The goods and services have different purposes, natures and methods of uses. They do not coincide in producers and the relevant public.

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 identical or similar are directed at the public at large.

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 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).

Therefore, the degree of attention is expected to vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

EUTM No 6 446 439 BERG International registration No 743 692	Bergfrei
Earlier trade marks	Contested sign

The relevant territories are, for the earlier European Union trade mark, the European Union and, for the earlier international registration, Germany and Austria.

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.

The verbal elements of the marks are meaningful in certain territories, for example in those countries where German is understood. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the relevant public (for the earlier European Union trade mark registration).

The coinciding word ‘BERG’ means ‘mountain’ in German. The word is considered distinctive for the goods at hand since the mere fact that land vehicles may cross a mountain does not render the word ‘BERG’ allusive, let alone weakly distinctive for the goods concerned.

The earlier international registration is a word mark while the earlier European Union registration is a figurative mark containing the word ‘BERG’ written in bold capital letters. The word is framed in black by a rectangle placed in front of a line pattern in the shape of a triangle of which the sides are slightly curved. The figurative elements of the mark will be perceived as decorative and have a limited, if any, impact on consumers. The word ‘BERG’ is the dominant (visually eye-catching) element of the earlier European Union registration.

The contested mark is a word mark ‘Bergfrei’ which will be perceived by German-speaking consumers as free of mountains. Both word elements of the contested mark, ‘BERG’ and ‘FREI’, as well as the contested mark taken as a whole, are considered distinctive for the goods at hand.

Visually, the marks coincide in ‘BERG’ which is the first part of the contested mark, this being the part on which consumers tend to focus. 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. The marks differ in the second part ‘FREI’ of the contested mark which has no counterpart in the earlier marks. As regards the earlier international registration and the contested mark, they are both word marks and protection is sought for the words as such and not their written form. Thus, differences in the use of lower or upper case are immaterial. In case of the earlier European Union trade mark and the contested sign, the signs differ further in their visual representation since the earlier European Union trade mark is a figurative mark. However, as explained above, the figurative element of the earlier European Union trade mark has a decorative nature, and consequently little, if any, impact on consumers.

The marks are visually similar to an average degree.

Aurally, the signs coincide in the pronunciation of ‘BERG’, i.e. the only word element of the earlier signs and the first part of the contested sign. The signs differ in ‘FREI’ placed at the end of the contested sign.

The signs are aurally similar to an average degree.

Conceptually, there is a conceptual link between the signs since all signs will be associated with the meaning of a mountain due to the presence of the word ‘BERG’ in all signs. Thus, the signs are conceptually similar to an average degree.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

It has been established in the previous parts of this decision that the contested goods and services are partly identical and similar to the opponent’s goods, and partly dissimilar to any of the opponent’s goods or services. It has also been concluded that the signs are visually, aurally and conceptually similar to an average degree. The earlier marks have normal distinctiveness.

The signs coincide in ‘BERG’ which constitutes the earlier international registration, and the dominant verbal element of the earlier European Union registration in their entirety. The coinciding element is placed at the beginning of the contested sign where consumers generally tend to focus when encountering the trade mark.

Taking into account the identity and similarity of the contested goods in Class 12, the average level of visual, aural and conceptual similarity of the conflicting signs, and the normal level of inherent distinctiveness of the earlier marks, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR at least for the relevant German-speaking public, even taking into account a higher level of attention.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-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 No 6 446 439 and international trade mark registration No 743 692 designating Germany and Austria. As stated above in section c) of this decision regarding the earlier European union trade mark, 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 found to be identical and similar to those of the earlier trade marks.

The rest of the contested goods and services 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 and services cannot be successful.

The opponent has also based its opposition on the Benelux trade mark registration No 653 413 ‘BERG’ (word) and international registration No 743 692 designating Croatia, United Kingdom, Ireland, France and Denmark ‘BERG’ (word). Since these marks are identical to international trade mark registration No 743 692 designating Germany and Austria which has already been compared and cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Katarzyna ZANIECKA

Anna BAKALARZ

Begoña URIARTE VALIENTE

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.