OPPOSITION No B 3 087 171

Accell Duitsland B.V., Industrieweg 4, 8444 AR, Heerenveen, Netherlands (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX, Weesp, Netherlands (professional representative)

a g a i n s t

Laura Mustari, Via di S. Andrea delle Fratte N. 31, 00187 Roma, Italy (applicant), represented by Studio Legale, Large Luigi Antonelli, 2, 00145 Roma, Italy (professional representative).

On 30/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 171 is partially upheld, namely for the following contested goods:

Class 12: Vehicles.

Class 25: Clothing.

2. European Union trade mark application No 18 026 115 is rejected for all the above goods. It may proceed for the remaining 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 18 026 115 for the word mark ‘Hibike’. The opposition is based on European Union trade mark registration No 6 601 298 for 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 and services

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

Class 12: Bicycles, tandems, auxiliary motors for cycles, motorcycles, trailers for bicycles, three and four wheel automobiles, transport tricycles with and without mechanic locomotion, basins for transport tricycles, side cars, and parts and accessories (as far as not included in other classes), including frames, pipes, fittings, axes, hubs, rim, wheels, conusses, chains, chainwheel, gear cases, dressguards, freewheels, brakes, back pedal brake one, spokes, controlling, pedals, children sitting, call, pump, saddle, bags, indicator, handles, repair boxes, tapes plasters, carrier, inner tubes, casings for pneumatic tyres, horns, mirrors, knee grips, foot rest rubbers, and duo session, fall stirrups of metal, windscreens, springy fork and behind forks.

Class 25: Clothing, footwear, headgear.

Class 28: Sports instruments, fitness apparatus and instruments, gymnastic instruments, articles for body exercise as far as not included in other classes including elastic, step, hand weights and bar bells; games, playthings; gymnastics and sporting articles not included in other classes; skates; toys and games products.

The contested goods and services are the following:

Class 12: Vehicles.

Class 25: Clothing.

Class 39: Vehicle rental.

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

The term ‘including’, 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.

Preliminary remark

The applicant claims that both companies are active within two different fields, having diverse consumer types in mind. In this regard, it should be pointed out that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s claim must be set aside.

Contested goods in Class 12

The contested vehicles include, as a broader category the opponent’s three and four wheel automobiles. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in class 25

Clothing are identically contained in both lists of goods.

Contested services in class 39

The contested vehicle rental is dissimilar to all goods covered by the earlier mark because they do not have relevant factors in common. In principle, they have different natures, as services are intangible while goods are tangible. Moreover, the contested services are offered by specialist companies who purchase vehicles and to rent them out to customers. Its purpose is to provide vehicle usually for short term, for example during holidays. Manufacturers of vehicles do not normally operate on the market as providers of rental services, which also means the goods and services in question are neither complementary nor in competition. Indeed, the relationship with consumers of cars is usually in the hand of specialised dealers whose goal is the sale of vehicles. Accordingly, a rental is usually a temporary service whereas the sale of a vehicle is a permanent deal (16/05/2013, T‑104/12, ECLI:EU:T:2013:256, 58 §). The said goods and services are, therefore, 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 are directed at the public at large. Taking into consideration the normally high 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).

The degree of attention may vary from average (e.g. clothing) to high (e.g. automobiles), depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

	Hibike
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 contested sign is the word mark ‘Hibike’. Although the sign is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In the present case, it is likely that at least the English speaking part of the public, and the non-English speaking part of the public with a basic knowledge of English, will split the sign into the component ‘Hi’ -used as a friendly greeting - and ‘bike’ as a reference to bicycle. However, at least for a part of consumers in the EU the verbal element ‘Hibike’ is meaningless. Since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public ((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 comparison of the signs on this part of the public in the relevant territory. Consequently, for this part of the public the contested sign is meaningless and distinctive to a normal degree.

The earlier mark is a figurative mark composed of the sole verbal element ‘HAIBIKE’ written in slightly stylised upper case letters. However, the typeface is not particularly elaborated or sophisticated and will not draw the consumer’s attention away from the word it merely embellishes. Since the verbal element has no meaning for the part of the public under analysis, it is normally distinctive.

Visually, the signs coincide in the string of letters ‘H*IBIKE’, that is, the contested sign in its entirely and six out of seven letters that form the earlier mark. However, they differ in the second letter ‘A’ and stylisation of the earlier mark, albeit it will not draw the consumer’s attention away from the word itself.

Therefore, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the analysed public in relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛H*I-B-I-K-E’, present identically in both signs. The pronunciation differs in the sound of the letter ‛A’ of the earlier sign, which has no counterpart in the contested mark.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the analysed 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 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 analysed public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association that the relevant public might make between the two marks and on the degree of similarity between the signs and the goods (recital 11 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, Sàbel, EU:C:1997:528, § 22).

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.

As set out above, the goods are partly identical and partly dissimilar and target the general public whose degree of attention varies from average to high. The inherent distinctiveness of the earlier mark is normal. The signs are visually similar to an average-degree and phonetically highly similar. Conceptually, the signs do not trigger any semantic content that may help to differentiate between them.

In general terms, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30; 12/07/2006, T-97/05, Marcorossi, EU:T:2006:203, § 39; 22/06/2005, T-34/04, Turkish Power, EU:T:2005:248, § 43). Taking all the above into account, the Opposition Division considers that the differences between the signs – which are only limited to the second letter ‘A’ and stylisation of the earlier mark – are clearly not sufficient to outweigh the visual and aural similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical goods are likely to think that they come from the same undertaking or from economically linked undertakings, in particular, because the 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking public which perceives the signs as meaningless and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 6 601 298. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested 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 services 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

Anna ZIOŁKOWSKA

María del Carmen COBOS PALOMO

Kieran HENEGHAN

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.