OPPOSITION No B 3 069 037

Racer, 479 Boulevard Maréchal Foch, 13300, Salon de Provence, France (opponent), represented by Cabinet Marek, 28 rue de la Loge, 13002, Marseille, France (professional representative)

a g a i n s t

Anila s.r.o., Hlavní 12, 73934 Šenov, Czech Republic (applicant)

On 06/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 069 037 is upheld for all the contested goods.

2. European Union trade mark application No 17 946 112 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 17 946 112 (figurative). The opposition is based on, inter alia, French trade mark registration No 4 191 442, for the word mark ‘RACER’. 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 earlier right mentioned above.

1. The goods

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

Class 9: Spectacles (optics) ; protective helmets for sports in particular motorcycling ; footwear for protection against accidents ; clothing for protection against accidents for motorcyclists.

Class 25: Clothing ; gloves (clothing) ; footwear.

Class 28: Bags intended for holding or transporting sports equipment.

The contested goods are the following:

Class 9: Protective helmets for motor cyclists; helmets for motorcyclists; motorcycle goggles; anti-glare glasses; goggles; safety glasses for protecting the eyes; antireflection coated eyeglasses; visors for helmets; safety footwear for protection against accident or injury; protective shoes [against accident or injury]; protective footwear for the prevention of accident or injury; helmet communications systems; safety tarpaulins; protective clothing [body armour]; sport bags adapted [shaped] to contain protective helmets; articles of protective clothing for wear by motorcyclists for protection against accident or injury; reflective safety vests; reflecting strips for wear; reflective apparel and clothing for the prevention of accidents.

Class 25: Leisure shoes; sports jackets; sports caps; trousers; trousers shorts; short trousers; union suits; motorcycle riding suits; combinations [clothing]; imitation leather dresses; leather dresses; clothing of leather; clothing of imitations of leather; motorcyclists' clothing of leather; leggings [trousers]; motorists' clothing; belts [clothing]; waist belts; cloaks; raincoats; underwear; sweat-absorbent underwear; linen clothing; pants; waistcoats; boots for motorcycling; motorcycle gloves; motorcycle jackets; waterproof suits for motorcyclists; tee-shirts; printed t-shirts; long-sleeved shirts; moisture-wicking sports shirts; short-sleeved t-shirts; sports shirts with short sleeves; crop tops; blue jeans; denims [clothing]; casual shirts; neck scarves; neck scarves [mufflers]; silk scarves; neckerchiefs; head scarves; shawls and headscarves; snoods [scarves]; sports pants; bloomers; moisture-wicking sports pants; sports jerseys and breeches for sports; golf trousers; casual trousers; waterproof trousers; sweatpants; slacks; trousers for children; cargo pants; camouflage pants; leather belts [clothing]; mackintoshes; waterproof capes; waterproof clothing; rainproof jackets; cagoules; waterproof boots; waterproof outerclothing; light-reflecting jackets; leather jackets; trousers of leather; sports jerseys; fingerless gloves; balaclavas; cowls [clothing]; thermal socks; functional underwear; baselayer bottoms; baselayer tops.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, 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).

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 9

The contested protective helmets for motor cyclists; helmets for motorcyclists; googles overlap with the opponent´s protective helmets for sports in particular motorcycling in the same class, and they are therefore considered identical.

The contested motorcycle goggles; anti-glare glasses; safety glasses for protecting the eyes; antireflection coated eyeglasses fall in the opponent´s broad category of spectacles (optics) in the same class, and they are therefore considered identical.

The contested safety footwear for protection against accident or injury; protective shoes [against accident or injury]; protective footwear for the prevention of accident or injury are identical (synonyms) to the opponent´s footwear for protection against accidents in the same class.

The contested protective clothing [body armour] overlap with the opponent´s clothing for protection against accidents for motorcyclists in the same class, and are therefore considered identical.

The contested visors for helmets; helmet communications systems are similar to the opponent´s protective helmets for sports in particular motorcycling in the same class, since they coincide in distribution channels/points of sale, they can be directed at the same consumers and usually originate from the same kind of undertakings.

The contested articles of protective clothing for wear by motorcyclists for protection against accident or injury are identical (synonyms) to the opponent´s clothing for protection against accidents for motorcyclists in the same class.

The contested reflective apparel and clothing for the prevention of accidents overlaps with the opponent´s clothing for protection against accidents for motorcyclists in the same class, since these specific goods can have, at the same time, the purpose of preventing the accident and protecting the person, in case the accident occurs. They are therefore considered identical.

Lastly, the contested sport bags adapted [shaped] to contain protective helmets are similar to the opponent´s bags intended for holding or transporting sports equipment in Class 28, since these latter ones can also be used for the purpose of containing protective helmets, even if they are not adapted (shaped). Therefore, these goods coincide in nature, can coincide in purpose and distribution channels/points of sale. They can be directed at the same consumers and originate from the same kind of undertakings. Furthermore, they are in competition.

The contested safety tarpaulins; reflective safety vests; reflecting strips for wear; consist of protective and safety equipment. These are similar to at least a low degree to the opponent´s clothing for protection against accidents for motorcyclists in the same class. These goods coincide in purpose, usually coincide in distribution channels/points of sale, can be directed at the same consumers and are likely to come from the same kind of undertakings.

Contested goods in Class 25

The contested leisure shoes; boots for motorcycling; waterproof boots fall in the broad category of the opponent´s footwear in the same class, and they are therefore considered identical.

The rest of the contested goods in this class consist of various types of clothing. Therefore, they fall in the opponent’s broad category of clothing in the same class. They are therefore considered identical.

The contested sports caps are similar to the opponent´s clothing in the same class, since they coincide in purpose, can coincide in distribution channels/points of sale, can be directed at the same consumers and can originate from the same kind of undertakings.

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 both the public at large and professionals.

The degree of attention may vary from average (e.g. in relation to the opponent´s gloves (clothing) in Class 25) to high. A high degree of attention is likely to be paid, for instance, in relation to goods that can have an impact on the health of the final user. This is the case of many of the contested goods in Class 9, which are for preventive and/or protective purposes (e.g. protective helmets for motor cyclists) and which can also be relatively expensive.

3. The signs

RACER
Earlier trade mark	Contested sign

The relevant territory is France.

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).

As regards the concept of ‘Racer’ and the distinctiveness of this element, the applicant claims the following:

‘the English word Racer means a person participating in racing. Target group (persons riding motorcycles or performing other similar sport requiring protective clothing) for which the products are intended will in most cases understand the word ‘racer’. The target group is a population of people living in the EU, where English language is quite understood at least in it basic level. Therefore, we consider the mere meaning of the word ‘racer’ not entirely distinctive, as the opponent claims in his objections, since the word Racer’ by itself is not fanciful to the most of the potential consumers(…)’ (emphasis added)

In this regard, the opponent has stated the following:

‘is an English word which refers to a person or an animal that take part in races. However, one has to admit that, as not being a basic English word, it is unlikely that it will be understood by the vast majority of consumers in the relevant territories who are not English-speaking people. For them, the word ‘RACER’ has no relation with the goods at issue. It is therefore perfectly distinctive’ (emphasis added)

In a similar previous case (15/06/2018, R 95/2018-5, RACER (fig.) / RACER et. al.), involving the same or similar signs and the same or very similar goods, the Board of Appeal stated the following in relation to the term ‘RACER’:

‘The relevant public is the French-speaking public. According to reputed French dictionaries, consulted on 14 June 2018 (http://larousse.fr/ and https://gr.bvdep.com/robert.asp), the word ‘racer’ in French has several meanings. The entry in the Le Grand Robert dictionary states: ‘Anglicism. Sports. 1. Race horse. 2. Sail or motor yacht for racing. 3. Small race car.’ The relevant entry in the Larousse dictionary reads: ‘1. Between 1948 and 1955, name given to racing cars with a single seat with motors of 500 cm3. 2. Motor boat for racing’

(…)

From the cited French dictionary entries it appears that the English word ‘racer’ has made its way into the French language, although the extent or intensity of the use of the word cannot be deduced from those dictionaries. Both dictionaries coincide in that the term when used in French refers to boats or cars used in racing. To the extent that the relevant French public indeed understands this meaning of the word, it may be associated with speed, and to that extent it is somewhat allusive in relation to several of the goods, e.g. the goods in Class 9, which all target motor cyclists. In respect of other goods, the term is neither descriptive nor allusive, e.g. socks, scarfs in Class 9. Overall, the inherent distinctiveness of the term, and therefore that of the earlier mark, ranges from below average to average in respect of the earlier goods’ (emphasis added)

Taking into account all of the above, the Opposition Division considers that ‘RACER’ will be understood by the French-speaking part of the public (See Board of Appeal´s explanations above) and it is of lower than average distinctive character in relation to part of the goods involved, namely those somehow related to speed, such as the contested protective helmets for motor cyclists or the opponent´s protective helmets for sports in particular motorcycling, in relation to which it may be perceived as allusive of their characteristics.

The word ‘RACER’ is of average distinctive character in relation to the goods that are not related to speed, such as the contested leisure shoes or the opponent´s clothing in class 25 (since this category covers clothing articles that are not related to racing/speed) for which it is neither descriptive nor allusive.

The stylised red letter ‘R’ in the contested mark has the concept of the letter it represents, and it is of average distinctive character. However, it has a somehow reduced impact for the reasons explained below.

The word ‘STREET‘ is the English term used to refer to a road, way or route (synonyms). It may be understood by the part of the public purchasing the
speed-related products referred to above, as a reference to the fact that they are meant to be used outdoors/on the road. In this scenario, it is of lower than average distinctive character. As a whole, the terms ‘STREET RACER’ (if both are understood) would have the concept of the person/thing that runs on the road.

The word ‘STREET’ is of average distinctive character in relation to the rest of goods, for which it is neither descriptive nor allusive. Lastly, since this term does not exist as such in French, it cannot be disregarded that part of the public perceives it as a meaningless invented term, and therefore as of average distinctive character in relation to the goods involved.

The contested mark has no element that could be considered clearly more dominant than other elements. However, when signs consist of both verbal and figurative components, 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). In this case, this can be applied to the stylised red letter ‘R’, and to the stylisation of the contested sign which is secondary, and has less impact than the words themselves.

Reading takes place from left to right and from top to bottom, what makes the word at the left/top of the mark (i.e. the beginning) the one causing stronger impact in consumers. Even if in this case the coinciding word ‘RACER’ is the last one read in the contested mark, the red letter ‘R’, which is the first element, will be perceived clearly as the first letter of the word ‘RACER’ below, and has a reduced impact for the reasons explained in the previous paragraph. This will lead consumers to focus on the verbal element ‘RACER’, despite its position at the end of the mark.

Visually, the signs coincide in ‘RACER’ and differ in ‘STREET’, the stylised red letter ‘R’ and colour and typeface, all in the contested sign. The earlier mark is entirely contained in the contested sign.

Taking into account the analysis of the elements in the marks carried out above, and the conclusions on their degree of distinctiveness and visual impact, it is considered that the signs are visually similar to, at least, a low degree.

Aurally, the pronunciation of the signs coincides in the sound of ‘RACER’, which constitutes the entire earlier mark, and the last element in the contested mark. The signs differ in the sound of ‘STREET’. The stylised red letter ‘R’ in the contested mark is not likely to be pronounced, since it is clearly perceived as the first letter of the word ‘RACER’ below it, and is of somehow reduced impact for the reasons explained above.

Taking into account the analysis of the elements in the marks carried out above, and the conclusions on their degree of distinctiveness, it is considered that the signs are aurally similar to, at least, a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The signs coincide in the concept of ‘RACER’ and differ in the concept of ‘STREET’ (if understood) and of the red letter ‘R’ in the contested mark. 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, according to the analysis carried out in section c) above, it is found that the earlier mark’s distinctiveness ranges from below average to average depending on the goods concerned.

5. Global assessment, other arguments and conclusion

The signs are visually and aurally similar to, at least, a low degree, and conceptually similar to a high degree. The degree of distinctiveness of the earlier mark ranges from below average to average depending on the goods concerned.

The goods compared are partly identical and partly similar (to varying degrees), they are directed at the public at large and at professionals, and the degree of attention paid by them during the purchase of the goods concerned may vary from average to high.

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, in this case, and even if certain differences between the signs are perceived, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). This is also likely to occur for the part of the public paying a higher than average degree of attention, who will still perceive the contested sign as a variation (e.g. a new line of products) of the earlier mark.

The applicant has claimed that the word ‘RACER’ is understood, generic, and therefore non-distinctive. In this regard, it submitted links to the website www.euipo.europa.eu/eSearch that lead to the search results of trade marks containing the word ‘BAKERY’, which the applicant considers to constitute a comparable scenario with ‘RACER’, and 6 links to trade marks containing the word ‘RACER’.

As regards the links to trade marks containing the word ‘BAKERY’, the Opposition Division considers that these are completely irrelevant for the present proceedings, since they do not only refer to a different term, but no conclusions can be deduced from the fact that various trade marks containing “BAKERY” have been applied for or registered. These are therefore set aside. As regards the search results for trade marks containing the word ‘RACER’, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘RACER’. Under these circumstances, the applicant’s claims must be set aside.

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 French trade mark registration No 4 191 442. It follows that the contested trade mark must be rejected for all the contested goods, also the ones found to be similar only to a low degree, since the coincidences between the signs are sufficient to counteract the low similarity of those goods.

As the earlier right French trade mark registration No 4 191 442 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) or the proof of use requested in relation to some of them.

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, 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

Inés GARCÍA LLEDÓ

María del Carmen SUCH SANCHEZ

Helen Louise MOSBACK

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.