OPPOSITION No B 3 102 919

Jets Marivent Spain, Cerro de la Butrera 3, 28223 Pozuelo de Alarcon, Spain (opponent), represented by P.E. Enterprise, S.L., Gran Via 81, planta 5°, Dpto. 9, 48011 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Alligator INTL Design, Calle Muntaner 239, 08021 Barcelona, Spain (applicant), represented by Tesla, 250 Rue Saint Jacques, 75005 Paris, France (professional representative).

On 24/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 102 919 is upheld for all the contested goods, namely

Class 12: Motorised and non-motorised scooters (vehicles); push scooters [vehicles]; bicycles and parts therefor (vehicles); parts for scooters (vehicles); electric vehicles; electric motors for two-wheeled vehicles.

2. European Union trade mark application No 18 099 207 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 099 207 ‘myT’ (word mark), namely against all the goods in Class 12. The opposition is based on the following earlier rights:

1. European Union trade mark registration No 17 805 359 (figurative mark)

2. Spanish trade mark registration No 3 701 306 (figurative mark)

3. European Union trade mark registration No 17 912 306 (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.

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 17 805 359 and Spanish trade mark registration No 3 701 306.

a) The goods

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

European Union trade mark registration No 17 805 359 (earlier mark 1)

Class 12: Motorcycles; bicycles.

Spanish trade mark registration No 3 701 306 (earlier mark 2)

Class 12: Vehicles; apparatus for locomotion by land, air or water.

The contested goods are the following:

Class 12: Motorised and non-motorised scooters (vehicles); push scooters [vehicles]; bicycles and parts therefor (vehicles); parts for scooters (vehicles); electric vehicles; electric motors for two-wheeled vehicles.

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.

The applicant argues that the goods indicated as trottinettes in the French version of the list of goods are translated as ‘scooters’ in English and argues that the English word ‘scooter’ can identify two types of vehicles, whereas the term trottinettes refers to only those with two small wheels and an upright handle. The applicant also claims that since the earlier marks are not registered for this type of goods, the contested goods cannot be identical, but only similar to a very low degree to the opponent’s goods.

In support of its arguments, the applicant quotes opposition decision 25/11/2015, No B 2 165 689, where it is stated that

apparatus for locomotion by … air or water; Vehicles for locomotion by … air, water or rail in the contested application are for example airplanes, boats, locomotives or wagons. Although they share the basic purpose of use with the opponent’s bicycles, namely moving people or things from one place to another, the nature of these goods is entirely different. They also differ in method of use, relevant consumer and producer. They are neither complementary nor clearly in competition. Consequently, they are dissimilar. These contested goods are even further removed from the remaining opponent’s goods in Classes 12 and 28. They are dissimilar to them too.

The Opposition Division notes the applicant’s remarks regarding the meaning of the term trottinettes and the possible meanings of the English word ‘scooters’. However, taking into account that these contested goods are classified in Class 12, and the presence of the indication vehicles next to each of them in the applicant’s list of goods, it is clear that they belong to the broad category of the opponent’s vehicles of earlier mark 2. Therefore, contrary to the applicant’s assertions, the Opposition Division finds that the contested motorised and non-motorised scooters (vehicles); push scooters [vehicles]; bicycles (vehicles); electric vehicles are included in the broad category of the opponent’s vehicles of earlier mark 2 and are therefore identical.

Regarding the abovementioned decision referred to by the applicant, the Opposition Division agrees that the contested goods are dissimilar to the opponent’s apparatus for locomotion by… air or water. However, since, in addition to these goods, the opponent’s goods also cover vehicles; motorcycles and apparatus for locomotion by land, the paragraph of the earlier decision quoted by the applicant is not relevant to the present case.

The contested (bicycles) and parts therefor (vehicles); parts for scooters (vehicles); electric motors for two-wheeled vehicles are similar to the opponent’s vehicles of earlier mark 2. Moreover, the contested electric motors for two-wheeled vehicles are similar to the opponent’s motorcycles of earlier mark 1. This is because it is common in the relevant market sectors for manufacturers of various kinds of vehicles to also manufacture parts or motors for these vehicles and offer them through the same channels. Moreover, these goods are of interest to the same consumers and are complementary.

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 are mostly directed at the public at large, but some are also directed at business consumers, such as professionals in service and repair stations for scooters, bicycles, motorcycles or electric vehicles.

The applicant disagrees with the opponent that the degree of attention, at least for part of the relevant public, is average in relation to the goods in question. According to the applicant, before deciding to buy these goods, the consumer often makes a detailed comparison of the features of the goods offered for sale and, therefore, the relevant public’s degree of attention is high.

In the case of cars, considering their price, 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). However, the same does not automatically apply to all the goods in question. For example, scooters are not a particularly sophisticated kind of vehicle and, given their relatively low price, do not require a high degree of attention when purchased. However, consumers are likely to pay a higher degree of attention in relation to such goods as electric vehicles or motorcycles, which may be quite expensive. Therefore, the relevant public’s degree of attention will vary from average to relatively high, depending on the nature of the goods, the frequency of purchase and their price.

c) The signs

	myT
Earlier trade marks	Contested sign

The relevant territories are the European Union and Spain.

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 contested sign is the word mark ‘myT’. The earlier marks are figurative marks composed of a verbal element ‘mitt’, depicted in stylised lower-case letters, with the letters ‘mi’ in black and ‘tt’ in orange. The applicant claims that, due to the stylisation of the letters ‘tt’, the relevant public may perceive the earlier marks as ‘miH’. Although it cannot be excluded that part of the relevant consumers may see the letter ‘H’ in the earlier marks, taking into account the position of the horizontal bar (which is not in the middle as is usual for the upper-case letter ‘H’), the Opposition Division considers that a significant part of the relevant public will perceive the earlier marks as ‘mitt’ with two lower-case letters ‘t’ joined together. Since this part of the public is more likely to confuse the signs due to the presence of the letter(s) ‘T’ in both of them, the Opposition Division will focus the assessment of similarity and likelihood of confusion on the part of the public that will perceive the contested sign as ‘mitt’, without considering any other possible perceptions.

The verbal element ‘mitt’ of the earlier marks may be perceived, for example, by the English-speaking public, as referring to ‘a covering for the hand which leaves the fingers and thumb exposed; a fingerless glove, spec. one worn by women in the 18th and 19th cent.’ or, as pointed out by the applicant, as ‘mitten’ meaning ‘a glove’ (information extracted from Oxford English Dictionary on 06/11/2020 at https://www.oed.com/view/Entry/120321?rskey=UPIabs&result=1#eid). The applicant claims that when perceived as such, the verbal element ‘mitt’ is weak, since the meaning of ‘gloves’ refers to the idea of motorised vehicles, particularly motorcycles. However, contrary to the applicant’s assertions, the Opposition Division does not consider that the reference to clothing articles (‘gloves’) impairs in any way the distinctiveness of the earlier marks with respect to the relevant goods in Class 12.

As regards the Spanish-speaking part of the public, since the English word ‘mitt’ is not a basic English word, it cannot be generally assumed that it will be understood by the relevant Spanish-speaking consumers. However, it cannot be excluded that, due to the colours in which the earlier marks are depicted, at least part of the public may split them into the meaningful element ‘mi’, meaning ‘my’ in Spanish, and the two letters ‘tt’. The rest of the public will perceive the verbal element ‘mitt’ as one meaningless word. In any case, the verbal element ‘mitt’ does not directly refer or allude to any characteristics of the goods in question and, therefore, has an average degree of distinctiveness.

According to the applicant, the contested sign ‘myT’ will be seen as a combination of the word ‘my’ meaning ‘mine’ and the letter ‘T’, which, by its shape, represents the handlebars of a scooter (trottinette). Therefore, in the applicant’s opinion, the contested sign will be understood by the relevant public as conveying the meaning of ‘my scooter’. In addition, the applicant claims that even Spanish-speaking consumers will perceive the contested sign in this way, as it is composed of simple English words.

The Opposition Division agrees with the applicant that, due to the difference in typeface (‘my’ written in lower-case letters and the ‘T’ in upper-case), part of the public may split the contested sign into two elements. However, there is nothing to suggest that even the part of the public that will recognise the English possessive determiner ‘my’ in the contested sign will perceive the letter ‘T’ as meaning ‘scooter’. The letter ‘T’ has nothing in common with the word ‘scooter’, nor is it a common abbreviation for the word trottinette (for the French-speaking part of the public). It is even less likely that the relevant consumers, who usually perceive a mark as a whole and do not analyse its particular details, will make a mental effort to connect the shape of the letter ‘T’ with the shape of handlebars.

Therefore, contrary to the applicant’s assertions, the letter ‘T’, even if dissected from the verbal element, will be simply perceived as a letter of the Latin alphabet. The Opposition Division agrees that at least part of the Spanish-speaking public may understand the meaning of the basic English word ‘my’ in the contested sign. However, the remaining part of the public will perceive the contested sign as one meaningless word. Regardless of the perception, the verbal element ‘myT’ does not directly describe or allude to any characteristics of the goods in question and has an average degree of distinctiveness.

Taking all the above into account, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, that will perceive the earlier marks as ‘mitt’ (as explained above), as this is a common public for both earlier marks.

Visually, the signs coincide in their first letter ‘m’ and in the third letter ‘t’, which is repeated twice in the earlier marks. The signs differ in their second letters: ‘i’ in the earlier marks and ‘y’ in the contested sign, as well as in the additional letter ‘t’ and the colours and stylisation of the earlier marks.

The Opposition Division agrees with the applicant that since the contested sign is a short three-letter sign, the relevant consumers will notice the abovementioned differences between the earlier marks and the contested sign. However, contrary to the applicant’s assertions, the fact that the earlier marks are stylised and the contested sign is a word mark is not particularly important, as the visual perception of the signs is almost fully determined by the letters composing them and not by their stylisation or colours. This is because graphic features have only a limited impact on the relevant consumers’ perception, so the stylisation or colours of the earlier marks will not be perceived as an indication of the commercial origin of the goods in question. For the same reason, the fact that the contested sign, as pointed out by the applicant, has no colours and that the letter ‘T’ is in upper case are not decisive factors when assessing similarity between the signs.

As regards the differences in the lengths of the signs, emphasised by the applicant, the earlier marks are only one letter longer than the contested sign. Moreover, this letter is not a different letter, but a mere repetition of the same letter ‘t’. Therefore, it does not change the fact that the signs share the same two letters.

Taking all the above into account, the visual differences between the signs, although perceptible, cannot not outweigh their similarities, and the signs are visually similar to at least a low degree.

Aurally, it is possible that the part of the public that recognises the meaningful elements ‘mi’ and ‘my’ in the earlier marks and the contested sign may pronounce the signs as suggested by the applicant: the earlier marks in three syllables as ‘MI-T-T’ and the contested sign in two syllables as ‘MY-T’. However, the rest of the public will pronounce both signs as short one-syllable words. Taking into account the pronunciation rules of the relevant language, the letter ‘i’ and the letter ‘y’ will be pronounced identically by the relevant Spanish-speaking public. The same holds true even for the part of the public that may perceive the meaning of the word ‘my’ in the contested sign as meaning ‘mi’, since, contrary to the applicant’s arguments, recognising the English word does not automatically mean that it will be pronounced in an ‘English way’.

As regards the pronunciation of the letters ‘tt’ at the end of the earlier marks, the Opposition Division agrees with the applicant that part of the public may pronounce them as two letters. However, taking into account that two consecutive ‘t’ letters are difficult to pronounce (when the earlier marks are perceived and pronounced as one word) and that the relevant public usually tries to simplify the pronunciation of marks, it is reasonable to assume that the rest of the public will pronounce the double ‘t’ at the end of the earlier marks as one letter ‘t’. Therefore, depending on the relevant public’s perception, the earlier marks and the contested sign are aurally either identical or highly similar.

Conceptually, for the part of the public that will perceive the identical meanings conveyed by the elements ‘mi’ of the earlier marks and ‘my’ of the contested sign, the signs are conceptually similar to at least an average degree, taking into account that the contested sign differs in the meaning conveyed by its remaining element ‘T’, which will be perceived as a letter of the Latin alphabet. For the part of the public that perceives the earlier marks and the contested sign as meaningless, a conceptual comparison is not possible, and 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 marks

The distinctiveness of the earlier marks 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.

e) Global assessment, other arguments and conclusion

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.

The contested goods are partly identical and partly similar to the opponent’s goods. They target both the public at large and business customers, whose degree of attention may vary from average to relatively high. The earlier marks possess a normal degree of inherent distinctiveness.

The signs are visually similar to at least a low degree, aurally identical or highly similar and conceptually, depending on the relevant public’s perception, are either similar to at least an average degree, or the conceptual aspect is neutral and plays no role in the assessment of likelihood of confusion.

The contested sign reproduces three out of the four letters of the earlier marks, two of which are in the same positions. Admittedly, the difference in the second letters of the signs, the addition of one letter, and the stylisation and colours of the earlier marks will not go unnoticed by the relevant consumers. However, the aural identity or high degree of similarity between the signs clearly outweighs the visual differences between them.

This finding cannot be undermined by the fact that the contested sign is a short mark, since, in addition to the aural aspect, at least part of the public will associate both marks with the same meaning. Therefore, the clear conceptual link between the signs and their aural identity (or high degree of similarity) outweigh the visual differences between the signs and support a finding of likelihood of confusion for this part of the public.

Likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the relevant signs directly, conclude that they designate different lines of goods from the same undertaking or from economically linked undertakings. It is frequent practice nowadays for companies to make small variations of their trade marks, for example by introducing some modifications in their verbal elements or adding stylisation and colours, in order to name new lines of products, or to create a modernised version of the mark. Given the abovementioned commonalities between the marks, it is highly conceivable that the relevant consumers, even those possessing a relatively high degree of attentiveness, when encountering the marks in the context of identical or similar goods, may perceive the contested sign as a variation or newer version of the earlier marks. They might therefore be led to believe that the goods in question come from the same undertaking or economically linked undertakings.

Taking into account the abovementioned principle of interdependence and the fact that even professional consumers, who pay a higher degree of attention, rarely have the chance to make a direct comparison between different marks and need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54), the identity or similarity between the goods, the aural identity (or high degree of similarity) between the signs and a clear conceptual link for, at least, part of the public offset a lesser degree of visual similarity between the signs. Taking all the relevant factors into account, the overall similarity between the signs is sufficient for a finding of a likelihood of confusion or, at least, a likelihood of association.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public, that will perceive two letters ‘tt’ in the earlier marks. As stated above in section c) of this decision, concerning the earlier EUTM, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 805 359 and Spanish trade mark registration No 3 701 306. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 17 805 359 and Spanish trade mark registration No 3 701 306 lead 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Zuzanna STOJKOWICZ

Rasa BARAKAUSKIENE

Biruté SATAITE-GONZALEZ

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.