OPPOSITION Nо B 3 128 518

 

Shimano, Inc., 3-77 Oimatsu-cho, Sakai-ku, 590-8577 Sakai-City, Osaka, Japan (opponent), represented by Muller & Eilbracht, Caballero Fabriek Saturnusstraat 60/ Unit 61, 2516 AH Den Haag, Netherlands (professional representative) 

 

a g a i n s t

 

Shenzhen Hongda Shimao Electronic Commerce Co., Ltd., Room 4008, Building 51, Area B, Songzaiyuan, Shangtang, Minzhi Street, Longhua District, Shenzhen City, Guangdong, China (applicant), represented by Mon Yin Lin, Gloria Fuertes 1, 2º D, 28340 Valdemoro, Spain (professional representative).

On 27/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 128 518 is partially upheld, namely for the following contested goods:

 

Class 12: Structural parts of bicycles; Fittings for bicycles for carrying luggage; Pumps for bicycles, cycles; Saddles for bicycles, cycles or motorcycles; Rims for wheels of bicycles, cycles; Pumps for inflating vehicle tyres; Pumps for inflating bicycle tyres; Children's bicycles; Bottle cages for bicycles; Brakes [bicycle parts]; Bicycle horns; Bicycle saddle covers; Bicycle pumps; Air pressure pumps [vehicle accessories]; Air pumps [vehicle accessories]; Air pumps for bicycles; Air pumps for automobiles.   Class 28: Stress relief exercise balls; Athletic protective wrist pads for cycling; Yoga straps; Yoga blocks; Gym balls; Jump ropes; Basketballs; Ball pumps; Sports equipment; Exercise pulleys; Chest expanders [exercisers]; Fitness exercise machines; Hand wraps for sports use; Wrist guards for athletic use; Knee pads for sports use; Spring bar tension sets for use in exercising.

2.

European Union trade mark application No 18 225 103 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 14/08/2020, the opponent filed an opposition against all of the goods of European Union trade mark application No 18 225 103 for ‘SZSHIMAO’ (word mark) namely against all the goods in Classes 12 and 28. The opposition is based on European Union trade mark registration No 17 578 162 for ‘SHIMANO’ (word 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

 

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

Class 9: Bicycle computers; display devices for providing information to bicycle riders; display devices for providing gear positions, gear ratio and/or battery level for bicycles; digital display devices (electronic) for bicycles; numerical value indicators for bicycle; time recording apparatus for bicycles; global positioning system (GPS) apparatus for bicycles; measuring apparatus for bicycles; numerical value receivers for bicycles; speed indicators for bicycles; manometers for bicycles; tachometers for bicycles; power meters for bicycles; odometers for bicycles; wireless data transmitters for bicycles; electric cables for bicycles; batteries; batteries for bicycles; battery chargers; battery chargers for bicycles; computer software; digital video cameras; digital video cameras for bicycles; digital video cameras for fishing; protective helmets for sports; protective helmets for cyclists; eyeglasses; sunglasses; goggles; cases for eyewear.

Class 12: Bicycles, including electric bicycles; parts, fittings and accessories of bicycles, including electric bicycles namely, hubs; internal gear hubs; bicycle hub which contains dynamo inside; hub quick release levers; hub quick release devices; axles of hubs; gear release levers; gear shift levers; gear shifting apparatus; derailleurs; chain guides; freewheels; sprockets; pulleys adapted for use with bicycles; chains; shift cables; cranks; crank sets; front chain wheels; pedals; toe clips; brake levers; brakes; brake cables; brake shoes; rims; brake rotors; brake pads; wheels; tires; inner tubes; spokes; spoke clips; bottom brackets; seat pillars; head parts for frame-fork assembly; suspensions; handlebars; handlebar stems; grips for handlebars; bar ends; seat posts; saddles; gear position indicators for bicycles; electric motors for bicycles; switches for bicycles.

Class 25: Footwear; shoes; boots; shoes for cyclists (cycling shoes); boots for cyclists; fishing shoes; fishing waders; shoes for rowing boat; sandals; sandals for cyclist; sandals for anglers; overshoes; cycling shoe covers; cycling insoles; clothing; clothing for sports (sports uniforms); clothing for cyclists; bicycle racing clothing; clothing for fishing; clothing for rowing; clothing for gymnastics; outer clothing; cycling tops; rain protection wear; rain coats; rain suits; hats; caps; gloves; cycling gloves; bicycle racing gloves; gloves for fishing; socks; shirts; jackets; jerseys; vests; fishing vests; pants; tights; underwear; cycling shorts; cycling warmers; cycling toe covers; cycling helmet covers; cycling bandanas; ankle gaiters; fishing gloves; cycling gloves; bicycle racing gloves.

Class 28: Fishing tackle, including reels for fishing; rods for fishing; reel seats for fishing; lines for fishing; line guides (for use on fishing rods); hooks for fishing; lures (artificial) for fishing; artificial baits; creels (fishing equipment); floats for fishing; fishing weights (namely, sinkers); landing nets for anglers; fishing bags; fishing rod cases; fishing tackle containers; hip-guards specially made for fishing.

 

 

The contested goods are the following:

 

Class 12: Structural parts of bicycles; Fittings for bicycles for carrying luggage; Pumps for bicycles, cycles; Saddles for bicycles, cycles or motorcycles; Rims for wheels of bicycles, cycles; Pumps for inflating vehicle tyres; Pumps for inflating bicycle tyres; Interior trim for automobiles; Children's bicycles; Bottle cages for bicycles; Brakes [bicycle parts]; Bicycle horns; Bicycle saddle covers; Bicycle pumps; Automobile cigarette lighters; Air pressure pumps [vehicle accessories]; Anti-theft devices for motor cars; Air pumps [vehicle accessories]; Air pumps for bicycles; Air pumps for automobiles.

Class 28: Stress relief exercise balls; Athletic protective wrist pads for cycling; Stuffed toys; Toys for domestic pets; Ornaments for Christmas trees; Inflatable pool toys; Yoga straps; Yoga blocks; Gym balls; Jump ropes; Basketballs; Ball pumps; Sports equipment; Exercise pulleys; Chest expanders [exercisers]; Fitness exercise machines; Hand wraps for sports use; Wrist guards for athletic use; Knee pads for sports use; Spring bar tension sets for use in exercising.

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

The term ‘including’ used in the opponent’s list of goods in Classes 12 and 28 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).

However, the term ‘namely’, used in the opponent’s list of goods in Classes 12 and 28 to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

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.

Contested goods in Class 12

The contested Children's bicycles are included in the broad category of the opponent’s Bicycles, including electric bicycles. Therefore, they are identical.

The contested Structural parts of bicycles include, as a broader category the opponent’s parts, fittings and accessories of bicycles, including electric bicycles namely, hubs; internal gear hubs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

 

The contested Rims for wheels of bicycles, cycles are included in a broad category of the opponent’s rims. Therefore, they are identical.

The contested Saddles for bicycles, cycles or motorcycles are included in the opponent’s broad category of saddles. Therefore, they are identical.

The contested Brakes [bicycle parts] are included in the broad category of the opponent’s brakes. Therefore, they are identical.

The contested Fittings for bicycles for carrying luggage; Pumps for bicycles, cycles; Pumps for inflating vehicle tyres; Pumps for inflating bicycle tyres; Bottle cages for bicycles; Bicycle horns; Bicycle saddle covers; Bicycle pumps; Air pumps for bicycles; Air pressure pumps [vehicle accessories]; Air pumps [vehicle accessories] are similar to the opponent’s Bicycles, including electric bicycles. These goods usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested Air pumps for automobiles have some relevant points in common with the broad category of the opponent’s suspensions in Class 12. The vehicles that used air suspension is a type of vehicle suspension powered by an electric or engine-driven air pump or compressor. This compressor pumps the air into a flexible bellows, usually made from textile-reinforced rubber. Unlike hydropneumatic suspension, which offers many similar features, air suspension does not use pressurized liquid, but pressurized air. The air pressure inflates the bellows, and raises the chassis from the axle. Therefore, these goods may coincide at least in the relevant public and distribution channels. Furthermore, they are complementary. These goods are similar at least to a low degree.

The remaining contested Automobile cigarette lighters ; Anti-theft devices for motor cars; Interior trim for automobiles (consists of many different types of parts ranging from seating to plastic parts. They make the car more fashionable) are dissimilar to all the opponent’s goods in Classes 9 (referring mainly to electric, electronic and protective components used with bicycles),12 (covering bicycles and their structural parts), 25 (mainly clothing, footwear and headwear for human beings) and 28 (fishing-related equipment). Although the end consumers or the distribution channels could coincide, this is insufficient to justify a finding of similarity. They have different natures, purposes and are usually produced by different companies. They are neither in competition nor complementary.

Contested goods in Class 28

The contested Stress relief exercise balls; Athletic protective wrist pads for cycling; Yoga straps; Yoga blocks; Gym balls; Jump ropes; Basketballs; Ball pumps; Sports equipment; Exercise pulleys; Chest expanders [exercisers]; Fitness exercise machines; Hand wraps for sports use; Wrist guards for athletic use; Knee pads for sports use; Spring bar tension sets for use in exercising are all used when exercising. Therefore, these goods are at least similar to a low degree to the opponent’s broad categories of clothing; footwear. They may coincide at least in producer, relevant public and distribution channels.

The remaining Stuffed toys; Toys for domestic pets; Ornaments for Christmas trees; Inflatable pool toys do not have anything in common with any of the opponent’s goods in Classes 9, 12, 25 and 28 (detailed above). Although the end consumers could coincide, this is insufficient to justify a finding of similarity. These goods have clearly different purposes, methods of use, distribution channels, and producers. In addition, they are not complementary or in competition. 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 professional public.

 

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 as well as security concerns, in particular when choosing parts of bicycles, in particular, brakes

 

c) The signs

 

SHIMANO	SZSHIMAO
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).

Both marks are word mark. In the case of word marks, it is the word as such that is protected and not its written form. Additionally, the word marks have no elements that could be considered more dominant (visually eye-catching) than other elements.

The conflicting signs are meaningless for the relevant public in the relevant territory. Consequently, they are inherently distinctive in relation to all the relevant goods.

Visually and aurally, the signs coincide in majority of their letters and sounds (at least for the majority of the public), including their first letter ‘S’, and the sequence of letters/sounds ‘SHIMA‘ and their final letter/sound ‘O’. Furthermore, the signs are composed of the same number of syllables (‘SHI-MA-NO’ and ‘SZSHI-MA-O’) and, therefore, their rhythm and intonation are also very similar. The vocals appear in the same order in the signs. They differ in the additional letters ‘S’ and ‘Z’ of the contested sign and the penultimate letter ‘N’ of the earlier mark.

Bearing in mind the abovementioned, the signs are visually and aurally similar to a higher than average 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 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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

e) Global assessment, other arguments and conclusion

 

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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).

As analysed above, the contested goods are partly identical, partly similar to various degrees and partly dissimilar to the ones covered by the earlier mark. They target the public at large and the professional public with a degree of attention that will vary from average to a high.

The earlier mark enjoys an average degree of inherent distinctiveness.

The signs in question are visually and aurally similar to a higher than average degree. In particular, the marks coincide in majority of their letters, including their first letters and the longer sequence ‘SHIMA‘. These coinciding letters are reproduced in the same order in both signs. Furthermore, neither of the signs has a concrete meaning that would help the consumers to differentiate the signs effectively.

Therefore, the differences between the signs are limited to the letters occupying less conspicuous position in them, as demonstrated above, and, for this reason, they are not sufficient to exclude a likelihood of confusion between the marks in question.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the perfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). 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 relevant public in relation to the goods found identical and similar to various degrees to the goods covered by the earlier mark. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 17 578 162.

Bearing in mind the above mentioned similarities between the signs, it follows that the contested trade mark must be rejected for all the goods found to be identical and similar to various degrees to those of the earlier mark, including these goods which are only similar to a low degree.

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)(b) 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

 

 

Claudia MARTINI

Monika CISZEWSKA

Philipp HOMANN

 

 

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.