OPPOSITION No B 3 075 763

Canyon Bicycles GmbH, Karl-Tesche-Str. 12, 56073 Koblenz, Germany (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Adrian Stachura, ul. Józefa Piłsudskiego 52, 28-500 Kazimierza Wielka, Poland (applicant), represented by Regionalna Agencja Patentowa "A-FUS", ul. W. Pola 12/112, 32-020 Wieliczka, Poland (professional representative).

On 18/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 075 763 is partly upheld, namely for the following goods in Classes 9, 12 and 28:

Class 9: Laptop computers; covers (shaped -) for computers; carrying cases for mobile computers; computers for use with bicycles; wearable computers; audio/visual and photographic devices; information technology and audio-visual, multimedia and photographic devices; data processing equipment and accessories (electrical and mechanical); communications equipment; computer networking and data communications equipment; wireless transmitting and receiving equipment; tablet computers; telephone apparatus; radiotelephones; mobile telephones; internet phones; satellite telephones; voip phones; covers for tablet computers.

Class 12: in its entirety.

Class 28: Games, video game apparatus; skateboards; skateboards [recreational equipment]; in-line roller skates; roller skates.

2. European Union trade mark application No 17 948 217 is rejected for all the above goods. It may proceed for the remaining goods in Classes 9 and 28.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the - remaining - goods (in Classes 9, 12, 28, after the applicant´s limitation of 08/02/2019) of European Union trade mark application No 17 948 217 (figurative mark: ‘ ’). The opposition is based on, inter alia, international trade mark registration No 1 158 745 designating the European Union (word mark: ‘CANYON’). The opponent invoked Article 8(1)(b) and Article 8(5) 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 international trade mark registration No 1 158 745 designating the European Union.

a) The goods and services

The goods and services in Classes 8, 9, 11, 12, 21, 35, 37 and 41 on which the opposition is based are the following:

Class 8: Tools and hand tools (hand-operated); cutting tools; spanners (tools); hammers (hand tools); pliers; borers.

Class 9: Protective helmets for sports; goggles for sports; protective goggles; sunglasses; bicycle computers; electric locks.

Class 11: Bicycle lights; light-emitting diodes [LED] lighting apparatus.

Class 12: Bicycles; bicycle parts and bicycle accessories, namely bicycle frames, bicycle tires, rims for wheels of bicycles, wheel sprockets, tires, tubeless tires for bicycles, inner tubes for bicycles, chains for bicycles and chain accessories, chain rings, chain guides, chain cases, chain catchers, brakes for bicycles and cycles, brake levers, handlebars, handlebar tapes, handlebar extensions, handlebars for bicycles, handle grips, handlebar-end plugs, bicycle racks and saddles, bicycle seat posts, seat clamps, pedals, shock absorbers, vibration dampers, bicycle forks, cycle hubs, inner bearings, quick releases, headsets (bicycles), stems, shifting systems, shift handles, cranks for cycles, gears for cycles, bicycle bells, panniers adapted for bicycles, transporting bags adapted for bicycles and bicycle parts, air pumps and its parts, spokes for bicycles, bag and bottle holders adapted for bicycles, saddle covers for bicycles, cycle stands and mudguards for bicycles, anti-theft devices and anti-theft alarms for vehicles.

Class 21: Bicycle drinking bottles.

Class 35: Advertising; business management; business administration; retail and wholesale services in connection with bicycles, bicycle parts and bicycle accessories; sponsorship search and organizing of sponsorship for others; sponsorship in the form of advertising.

Class 37: Servicing, maintenance and repair of bicycles, bicycle parts and bicycle accessories.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; the afore-mentioned services also in connection with cycling; organizing, arranging and conducting of sport events; organization of sporting matches; organization of competitions (education or entertainment); information about sport, recreation and events (entertainment); information about sport, cycling, bicycles, recreation and entertainment; services in connection with recreation; organization and conducting of live events; arranging and conducting of seminars and workshops (training); writing of texts, other than publicity texts; providing electronic publications (not downloadable); publication of print products, also in electronic form, also via the Internet, other than for advertising purposes; publication of print products, other than for advertising purposes, also via the Internet and other communication networks in connection with sport, cycling, bicycles and recreation.

The (remaining, see above) contested goods in Classes 9, 12 and 28 are the following:

Class 9: Laptop computers; covers (shaped -) for computers; carrying cases for mobile computers; computers for use with bicycles; wearable computers; audio/visual and photographic devices; information technology and audio-visual, multimedia and photographic devices; data processing equipment and accessories (electrical and mechanical); communications equipment; computer networking and data communications equipment; dab radios; wireless transmitting and receiving equipment; tablet computers; covers for tablet computers; telephone apparatus; radiotelephones; mobile telephones; internet phones; satellite telephones; voip phones; cases for telephones; cell phone covers; carrying cases for cellular phones; dashboard mounts for mobile phones.

Class 12: Push scooters [vehicles]; pedal scooters; electric vehicles.

Class 28: Toy telephones; toy computers [not working]; toys, games, playthings and novelties; scooters [toys]; video game apparatus; skateboards; bags for skateboards; skateboards [recreational equipment]; in-line roller skates; roller skates; toy roller skates.

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 ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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

Computers for use with bicycles are identically contained in both lists of goods (including synonyms).

The contested wearable computers; audio/visual devices; information technology and audio-visual, multimedia devices; data processing equipment; communications equipment; computer networking and data communications equipment; wireless transmitting and receiving equipment include, as broader categories, the opponent’s bicycle computers. 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 telephone apparatus; radiotelephones; mobile telephones; internet phones; satellite telephones; voip phones have the same producer, relevant public, distribution channels and method of use as the opponent´s bicycle computers. Furthermore, they are complementary. A bicycle computer is a portable computer used to record the tours and usage etc. measuring distance and time by using GPS. Therefore, they are similar to a high degree.

The contested laptop computers; tablet computers have the same purpose, distribution channels, public and producer as the opponent´s bicycle computers. Therefore, they are at least similar.

The contested photographic devices have the same distribution channels, public and producer as the opponent´s bicycle computers as they as well can contain GPS elements. Therefore, they are at least similar to a low degree.

The contested covers (shaped -) for computers; covers for tablet computers; carrying cases for mobile computers; data accessories (electrical and mechanical) are similar to a low degree to bicycle computers as they usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

The remaining contested dab radios; cases for telephones; cell phone covers; carrying cases for cellular phones; dashboard mounts for mobile phones have different natures and purposes from the opponent’s goods and services. Furthermore, these contested goods are neither complementary to nor in competition with the opponent’s goods and services in Classes 9, 11, 12, 21, 35, 37 and 41. Their distribution channels and methods of use are also different. Consumers would not assume that these goods come from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

Contested goods in Class 12

The contested electric vehicles overlap with the opponent’s bicycles since they contain also electric bicycles. Therefore, they are identical.

All the remaining contested push scooters [vehicles]; pedal scooters have the same distribution channels, public and producer as the opponent´s bicycles. Therefore, they are similar.

Contested goods in Class 28

The contested games, video game apparatus are similar to a low degree to entertainment in Class 41 as they have the same public and producer. Furthermore, they are complementary.

The contested skateboards; skateboards [recreational equipment]; in-line roller skates; roller skates are similar to a low degree to sporting activities in Class 41 as they have the same purpose. They usually coincide in relevant public. Furthermore, they are complementary.

The remaining contested toy telephones; toy computers [not working]; toys; playthings and novelties; scooters [toys]; bags for skateboards; toy roller skates have different natures and purposes from the opponent’s goods and services in Classes 9, 11, 12, 21, 35, 37 and 41. Furthermore, these contested goods are neither complementary to nor in competition with the opponent’s goods and services. Their distribution channels and methods of use are also different. Consumers would not assume that these goods come from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

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 or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

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

c) The signs

CANYON
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). This applies by analogy to international registrations designating the European Union. 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 trade mark ‘CANYON’ will be understood in some territories of the European Union. In order to avoid conceptual differences between the signs, the Office relies on the part of the public that does not understand the meaning of the trade mark, such as at least a part of the public in Greece and Slovakia.

The earlier trade mark is a word mark, which is protected in all typefaces.

The contested sign is a figurative mark. The figurative elements are limited to the stylization of the word element ‘CAVION’ using a special font. Since they are not really fanciful, they are weak.

Both signs have no meaning for the relevant public and are, therefore, distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. 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.

Visually, the signs have the same number of letters, namely six. The first two letters ‘CA’ and the endings ‘ON’ coincide. The differences are in the third and fourth letter ‘NY’ of the earlier trade mark and ‘VI’ of the contested sign. The typeface of the contested sign cannot be taken into account in a relevant manner as it has been found being weak, however the use of the typeface leads. Since the letter combination at the beginning and at the ending of the signs coincide and the differences are in the middle, they will visually not particularly being noted. Therefore, the signs are visually similar to an above average degree.

Aurally, at least by a part of the relevant public, the signs will be pronounced as follows:

Earlier trade mark = ‘CA-NI-ON’;

Contested trade mark = ‘CA-W/FI-ON’.

Since the letter ‘Y’ of the earlier trade mark will be spoken at least by a part of the public as the letter ‘I’, the only acoustic difference between the signs is the first letter of the second syllables, namely ‘N’ of the earlier trade mark and ‘W/F’ of the contested sign. Since the rest of the signs coincides, they are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 and services 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

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are partly identical, partly similar to various degrees and partly dissimilar.

According to Article 8(1)(b) EUTMR, similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are partly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected in regard to those goods.

Taking into account the above average degree of visual similarity, the high degree of aural similarity, the neutral outcome of conceptual similarity, the normal distinctiveness of the earlier trade mark and the identity and similarity of the goods, there is, even for the public with a high degree of attention, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This applies even more so for the public with an average degree of attention. This also applies for the goods, which are only similar to a low degree because of the above average degree of visual similarity and the high degree of aural similarity.

Considering all the above, there is a likelihood of confusion on the part of the Greek- and/or Slovak-speaking part of the public. 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 has not filed any observations. Therefore, its arguments cannot be taken into account.

The opponent has also based its opposition on the following earlier trade marks:

 International trade mark registration No 1 158 094 designating the European Union (figurative mark: ‘ ’) for goods and services in Classes 8, 9, 11, 12, 21, 35, 37 and 41;

 German trade mark registration No 395 46 146 (word mark: ‘CANYON’) for goods in Classes 11 and 12;

 German trade mark registration No 302 012 028 510 (word mark: ‘CANYON’) for goods and services in Classes 8, 9, 11, 12, 21, 35, 37 and 41.

Since these marks are partly identical to the one which has been compared and cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected.

Therefore, no likelihood of confusion exists with respect to those goods.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T 345/08 & T 357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark[s]

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR.

As already stated under Article 8(1)(b) EUTMR, no evidence has been submitted by the opponent. Therefore, there was no increased distinctiveness and logically no reputation could be found.

b) Conclusion

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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

Claudia MARTINI

Peter QUAY

Martin EBERL

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.