OPPOSITION No B 3 065 527

H&S Bike Discount GmbH, Werner-von-Braun-Straße 15, 53501 Grafschaft, Germany (opponent), represented by Augspurger Tesch Friderichs Patent- und Rechtsanwälte PartG mbB, Kaiserstrasse 39, 55116 Mainz, Germany (professional representative)

a g a i n s t

Jose Maria Sánchez Goyenechea, Anaka 28, 20301 Irún, Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative).

On 26/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 527 is partially upheld, namely for the following contested goods:

Class 12: Vehicles; apparatus for locomotion by land; motorized scooters; motorized and non-motorized scooters for personal transportation; scooters [vehicles].

Class 25: Clothing; footwear; the aforementioned goods excluding clothing for cyclists, clothing for sports, sports shoes.

Class 28: Gymnastic articles; gymnastic and sporting articles; skateboards; skis; snowboards; boards used in the practice of water sports; surfboards; sailboards; body boards; bodysurfing boards; wakeboards; kiteboards; kneeboards; skim boards; swimming kick boards

2. European Union trade mark application No 17 934 500 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 17 934 500 for the figurative mark . The opposition is based on International trade mark registration No 1 196 093, designating the European Union, for the word mark ‘SLIDE’. 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.

1. The goods

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

Class 8: Repair tools for bicycles.

Class 12: Bicycles and bicycles parts.

Class 25: Clothing for cyclists; sport shoes, headgear.

After limitation requested by the applicant on 04/07/2019 and on 05/07/2019, the contested goods are the following:

Class 12: Vehicles; apparatus for locomotion by water; apparatus for locomotion by air; apparatus for locomotion by land; motorized scooters; motorized and non-motorized scooters for personal transportation; scooters [vehicles].

Class 25: Clothing; footwear; the aforementioned goods excluding clothing for cyclists, clothing for sports, sports shoes.

Class 28: Games; toys; gymnastic articles; gymnastic and sporting articles; decorations for Christmas trees; skateboards; skis; snowboards; boards used in the practice of water sports; surfboards; sailboards; body boards; bodysurfing boards; wakeboards; kiteboards; kneeboards; skim boards; swimming kick boards.

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.

Contested goods in Class 12

The contested vehicles and apparatus for locomotion by land include as a broad category the opponent’s bicycles. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested motorized scooters; motorized and non-motorized scooters for personal transportation; scooters [vehicles] are all motorised or non-motorised vehicles used as a means of transportation by land. Considering that the opponent’s bicycles include also electric bicycles, these goods under comparison have similar purposes and at least coincide in relevant public, producers and distribution channels. Contrary to the applicant’s view, despite the additional specific meanings that the English word ‘scooters’ may have, the above considerations apply also to the contested scooters considered as the equivalent of the Spanish ‘patinetes’ specifically claimed in the contested application. Therefore, they are at least similar to a low degree.

The contested apparatus for locomotion by water; apparatus for locomotion by air are dissimilar to the opponent’s bicycles in Class 12. These goods respectively belong to distinct industries which require fundamentally different expertise and locomotion solutions. The goods have a different nature and method of use. They are not expected to be distributed through the same channels, nor to be manufactured by the same companies. Furthermore, they are not complementary nor in competition to one another. Therefore, they are dissimilar.

Similar considerations apply when comparing these contested goods to the remaining opponent’s goods which are (i) parts and repairing tool for a specific land vehicle; (ii) articles of clothing, footwear and headgear. These goods do not have anything in common in terms of nature, purpose, producers and distribution channels. Furthermore they are not complementary nor in competition to one another. Therefore they are dissimilar.

Contested goods in Class 25

The contested clothing; footwear; the aforementioned goods excluding clothing for cyclists, clothing for sports, sports shoes are similar to the opponent’s headgear. These goods under comparison coincide in purpose (covering and protect the human body) and relevant public. Furthermore, they can be produced by the same companies and distributed through the same channels.

Contested goods in Class 28

The contested gymnastic articles; gymnastic and sporting articles; skateboards; skis; snowboards; boards used in the practice of water sports; surfboards; sailboards; body boards; bodysurfing boards; wakeboards; kiteboards; kneeboards; skim boards; swimming kick boards are at least similar to a low degree to the opponent’s sport shoes and/or to the opponent’s headgear in Class 25, respectively, since they at least coincide in producer, relevant public and distribution channels.

The contested games; toys; decorations for Christmas trees are dissimilar to all the opponent’s goods. These goods do not have anything in common in terms of nature, purpose, producers and distribution channels. Furthermore they are not complementary nor in competition to one another. With specific reference to the contested toys, contrary to the opponent’s view, the fact that these goods include toy vehicles does result in any similarity with the opponent’s goods. Indeed, toys and apparatus for locomotion belong to very different industries and they are not expected to be distributed through the same channels, nor to be manufactured by the same companies. Therefore all these goods are dissimilar.

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, part of the goods found to be identical or similar to varying degrees are directed at the public at large (e.g. sport shoes and headgear) while part of them are directed both at the public at large and at business consumers (e.g. apparatus for locomotion by land).

The degree of attention varies from average to high.

In particular, as far as vehicles are concerned, taking into consideration the price of certain types of vehicles, 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 vehicle, either new or second-hand, in the same way as they would buy articles purchased on a daily basis.

3. The signs

SLIDE
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 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 earlier mark is a word mark composed of the verbal element ‘SLIDE’.

Contrary to the applicant’s view, despite the graphic stylisation adopted, the verbal element of the contested sign will be easily read and perceived, at least by a part of the English-speaking public, as the English word ‘slide’. Indeed, consumers tend to look for a meaning in trade marks and letters in trade marks are often deliberately distorted or replaced with figurative elements with a similar shape to those letters to increase their effect or impact.

Since there is no need to establish that all actual or potential consumers of the relevant goods or services are likely to be confused (20/07/2017, T-521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the present comparison on the English-speaking part of the public who will read and perceive the verbal element of the contested sign as ‘Slide’, for which the likelihood of confusion might be higher.

The common verbal element ‘SLIDE’ is likely to be perceived by the public under examination either as a noun (meaning inter alia ‘a structure with a smooth sloping surface used as a toy’ or as ‘a dispositive’) or as a verb (meaning ‘to move from one place to another smoothly; to glide’ or ‘to slide off’).

In any case, despite a vague allusion to the idea of movement where this common element is perceived as a verb, all these meanings do not describe or allude to any of the opponent’s goods in question.

However, considered that some of the contested goods (e.g. apparatus for locomotion by land) might include items that actually slides (e.g. snow sledges for transportation), this element is weak for these goods, while it is distinctive for the rest of the contested goods.

The figurative element depicting a striped thunder in the contested sign do not have any meaning related to the goods in question and is, therefore, distinctive.

The stylisation of the verbal element ‘Slide’ in the contested sign presents a certain degree of distinctiveness mainly conferred by the little thunder replacing the letter ‘l’.

The framed circular background constitutes a basic shape and it will be perceived as merely serving a decorative function. As such, it is not distinctive.

There are no elements in the contested sign that are more dominant (eye-catching) than others.

Visually, the signs coincide in the verbal element ‘SLIDE’ which composes the earlier mark and which will be identically perceived in the contested sign by the public under examination. The signs differ in the graphic stylisation and figurative elements of the contested sign. However, when signs consist of both verbal and figurative components (which is the case of the contested sign), 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).

Reference is made to the previous assertions concerning the degree of distinctiveness of the elements of the signs.

Therefore, the signs are visually similar at least to an average degree.

Aurally, the pronunciation of the signs coincides given that the earlier mark constitutes the sole verbal element in the contested sign. Therefore, the signs are aurally identical.

Conceptually, both signs will be associated to the concept conveyed by the common element ‘SLIDE’. This concept is weak in relation to some of the contested goods. Therefore, taking into account also the semantic content of the figurative elements of the contested sign, the signs are conceptually similar to a low degree in respect of these goods. In respect to the remaining goods, the signs are conceptually similar to a high 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 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 under examination. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified. 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 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 may be offset by a lower degree of similarity between the marks, and vice versa (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).

In the present case, the contested goods are partly identical or similar to varying degrees and partly dissimilar to the opponent’s goods. The earlier mark has a normal distinctiveness. The degree of attention of the public varies from average to high.

Furthermore, it was established above that the marks are visually similar at least to an average degree and aurally identical. They are conceptually similar to a low degree in respect of some of the goods and to a high degree in respect to the remaining ones.

The similarity of the signs resides in the fact that the earlier mark, ‘SLIDE’, is entirely reproduced in the sole verbal element of the contested sign. Furthermore, the differences between the signs are confined to the graphic stylisation and figurative elements that generally have a lesser impact than verbal elements in the consumers’ perception.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking public that will read and perceive the verbal element of the contested sign as ‘Slide’. 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.

The applicant argues that the opponent operates in the market sector of bicycles which is not in the applicant’s interest. However, the particular circumstances in which the goods or services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C 171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C 354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T 276/09, Yakut, EU:T:2012:313, § 58).

Therefore, the opposition is partly well founded on the basis of the opponent’s International trade mark registration No 1 196 093.

It follows that the contested mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark, including those goods found to be similar to a low degree. Indeed, applying the aforementioned principle of interdependence, it is considered that the similarities between the signs are sufficient to offset the low degree of similarity between some of the goods.

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

Sandra IBAÑEZ

Rosario GURRIERI

Cristina SENERIO LLOVET

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.