OPPOSITION No B 2 611 658

Real Automovil Club de España, Isaac Newton, 4 Parque Tecnológico de Madrid (PTM), 28760 Tres Cantos (Madrid), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Emby Trading Limited, 29 St. Mary Street, Birkirkara BKR4684, Malta (applicant), represented by Perani & Partners SPA, Via XX Settembre, 89, 00187 Roma, Italy (professional representative).

On 23/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 611 658 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 263 909. The opposition is based on Spanish trade mark registration No 3 551 123. 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.

1. The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and Instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; correcting lenses; spectacles; sunglasses; clip-on sunglasses; contact lenses; lenses, glasses, frames, sidepieces, chains and cords for spectacles and sunglasses; covers and cases adapted for optical apparatus and products; covers and cases for spectacles, sunglasses and contact lenses; holders for spectacles and sunglasses; covers, carriers and bags adapted for computers, telephones, electronic agendas, radios and portable media players; accelerometers; acid hydrometers; batteries, electric, for vehicles; aerometers; agendas (electronic-); anti-theft warning apparatus; alcohol meters; mouse pads; ammeters; calibrating rings; aerials; speed checking apparatus for vehicles; global positioning system [GPS] apparatus; navigation apparatus for vehicles [on-board computers]; vehicle radios; radio pagers; precision measuring apparatus; telephone apparatus; life saving apparatus and equipment; beacons, luminous; batteries, electric; compasses (directional-); starter cables for motors; junction boxes [electricity]; gauges; shoes for protection against accidents, irradiation and fire; signal bells; battery chargers; chargers for electric batteries; headphones; protective helmets; protective helmets for sports; life jackets; life belts; traffic cones; cell phone straps; milage recorders for vehicles; revolution counters; densimeters; reflecting discs for wear, for the prevention of traffic accidents; steering apparatus, automatic, for vehicles; balancing apparatus; gasometers [measuring instruments]; gloves for protection against accidents; gloves for divers; hardware; pressure in vehicle tires [tyres] (automatic indicators of low-); gasoline gauges; slope indicators; electric loss indicators; temperature indicators; vacuum gauges; speed indicators; water level indicators; theft prevention installations, electric; hands free kits for phones; limiters [electricity]; signal lanterns; safety tarpaulins; flashing lights [luminous signals]; protective masks; USB flash drives; modems; signalling panels, luminous or mechanical; vehicle steering apparatus, automatic; pointers (light-emitting electronic-); radar apparatus; nets for protection against accidents; safety nets; life nets; voltage regulators for vehicles; knee-pads for workers; life buoys; whistle alarms; signalling whistles; simulators for the steering and control of vehicles; computer keyboards; teleprompters; thermostats for vehicles; electronic pocket translators; clothing for protection against accidents, irradiation and firs; anti-dazzle and anti-glare visors; downloadable electronic publications; electronic publications recorded on computer media; computer software applications, downloadable.

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; luggage, bags, briefcases and carrier bags; handbags; evening bags; bags; shopping bags; pouches; holdalls; rucksacks; school bags; fanny packs; duffel bags; shoulder belts [straps); sling bags for carrying infants and safety harnesses for children; vanity cases, not fitted; travelling sets [leatherware); cases, of leather or leatherboard; garment bags for travel; tie cases; portfolios; purses; wallets (pocket-); key cases; card holders; credit card cases; jewellery rolls for travel; leather garments; coverings of skins [furs]; boxes of leather; laces and straps of leather; umbrella and parasol covers; clothing for pets; collars for animals; covers and wraps for animals; leatherboard; leather, unworked or semi-worked; worked or semi-worked hides and other leather; trimmings of leather for furniture; walking stick seats; pouch baby carriers; furniture coverings of leather; hat boxes of leather.

Class 25: Clothing; footwear; headgear; aprons [clothing]; masquerade costumes; overalls; belts (money-) [clothing]; kerchiefs [clothing]; pocket squares; shoulder scarves; garments for protecting .clothing; motorists' and motorcyclists' clothing; uniforms; wedding gowns.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; golf bags, with or without wheels; edges of skis; golf bag carts; wax for skis; skis; waterskis; ski bindings; water wings; bags especially designed for skis and surfboards; gloves for games; golf gloves; models being toys; masts for sail boards; scale model vehicles; cards (playing-); golf clubs; paragliders; skating boots with skates attached; skateboards; piñatas; scrapers for skis; nets for sports; radio-controlled toy vehicles; toy vehicles.

Class 35: Advertising; business management; business administration; office functions; procurement services for others (purchasing goods and services for other businesses); updating of advertising material; import-export agencies; commercial information agencies; advertising agencies; rental of vending machines; rental of advertising space; rental of photocopying machines; office machine and equipment rental; publicity material rental; rental of advertising time on communication media; cost price analysis; advisory services for business management; business management assistance; business auditing; data search in computer files for others; marketing research; sponsorship search; business research; commercial or industrial management assistance; price comparison services; compilation of information into computer databases; layout services for advertising purposes; news clipping services; business management consultancy; personnel management consultancy; business organization consultancy; business management and organization consultancy; professional business consultancy; book-keeping; telephone answering for unavailable subscribers; publicity columns preparation; tax preparation; shop window dressing; demonstration of goods; dissemination of advertising matter; distribution of samples; relocation services for businesses; drawing up of statements of accounts; marketing studies; outsourcing services (business assistance); invoicing; organization of trade fairs for commercial or advertising purposes; business management of hotels; commercial administration of the licensing of the goods and services of others; computerized file management; business management of performing artists; business inquiries; business information; commercial information and advice for consumers (consumer advice shop); business investigations; marketing; typing; modelling for advertising or sales promotion; payroll preparation; employment agencies; organization of fashion shows for promotional purposes; organization of exhibitions for commercial or advertising purposes; arranging newspaper subscriptions for others; psychological testing for the selection of personnel; presentation of goods on communication media, for retail purposes; economic forecasting; production of advertising films; sales promotion for others; publication of publicity texts; publicity; on-line advertising on a computer network; outdoor advertising; direct mail advertising; advertising by mail order; radio advertising; television advertising; compilation of statistics; writing of publicity texts; public relations; document reproduction; secretarial services; personnel recruitment; business efficiency experts; photocopying services; business management of sports people; telemarketing services; systemization of information into computer databases; opinion polling; arranging subscriptions to telecommunication services for others; shorthand; administrative processing of purchase orders; transcription; word processing; business appraisals; wholesaling or retailing of pharmaceutical, veterinary, or hygienic preparations and medical supplies; auctioneering; updating and maintenance of data in computer databases; providing business information via a web site.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; banking actuarial services; real estate management; apartment house management; financial management; customs brokerage; accommodation bureaux (apartments); debt collection agencies; credit bureaux; real estate agencies; housing agents; renting of flats; rental of offices (real estate); financial analysis; lease-purchase financing; leasing of real estate; leasing of farms; debt advisory services; home banking; safe deposit services; financial clearing; rent collection; mutual funds; insurance consultancy; financial consultancy; brokerage; brokerage of carbon credits; insurance brokerage; securities brokerage; stocks and bonds brokerage; stock exchange quotations; deposits of valuables; factoring; issue of tokens of value; issuing of travellers' checks (cheques); issuance of credit cards; repair costs evaluation (financial appraisal); fiscal assessments; financial evaluation (insurance, banking, real estate); surety services; trusteeship; financing services; provident fund services; insurance information; financial information; capital investments; retirement payment services; business liquidation services, financial; exchanging money; organization of collections; instalment loans; financial sponsorship; lending against security; loans (financing); pawnbrokerage; charitable fund raising; mortgage banking; savings bank services; insurance underwriting; accident insurance underwriting; fire insurance underwriting; life insurance underwriting; marine insurance underwriting; health insurance underwriting; credit card services; debit card services; antique appraisal; jewellery appraisal; art appraisal; stamp appraisal; numismatic appraisal; real estate appraisal; electronic funds transfer; financial evaluation of standing timber; financial evaluation of wool; check (cheque) verification.

The contested goods and services are the following:

Class 9: Telephone apparatus, modems, mobile telephone holders; Headphones for receiving sound, microphones, CD and DVD players, MP3 players; Computers, Computer software, Webcams, Monitors, Printers and Peripherals for computers; Electronic diaries; Desk and pocket electronic calculators; Video cameras adapted for monitoring purposes; Safety helmets for motorcyclists and motorists; Spectacles and sunglasses, spectacle glasses, contact lenses, spectacle frames, spectacle cases and chains; Credit card holders made of leather.

Class 25: Clothing for men, women and children, in particular vests, sweatshirts, stockings, shirts, coats, belts, ties, handkerchiefs, scarves, gloves, waterproof clothing, trousers, swimming costumes and combinations; Clothing of leather, and of imitations of leather; Waist belts; Technical clothing for motorists, motorcyclists and cyclists; Technical clothing for sports, in particular for horse riding, golf, swimming, boating, sailing, tennis, fencing, skiing; Footwear for men, women and children, in particular slippers, shoes and boots; Hats.

Class 35: Real estate auctions, telephone and television auctions, organisation of online auctions, business management, office functions.

Contested goods in Class 9

Telephone apparatus, modems, headphones for receiving sound, computers, computer software, spectacles and sunglasses, spectacle glasses, contact lenses, spectacle frames, spectacle cases and chains are identically contained in both lists of goods in Class 9 (including synonyms).

The contested microphones, CD and DVD players, MP3 players; webcams; monitors; video cameras adapted for monitoring purposes are included in the broad category the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

The contested safety helmets for motorcyclists and motorists are included in the broad category of the opponent’s protective helmets. Therefore, they are identical.

The contested electronic diaries are schedule books kept on a computer. Instead of using pen and paper to write down appointments, meetings and other time-sensitive tasks, an individual can install software that performs the same operations. Therefore, they are included in the broad category the opponent’s computer software. They are thus identical.

The contested desk and pocket electronic calculators are included in the broad category the opponent’s calculating machines. Therefore, they are identical.

The contested mobile telephone holders include, as a broader category the opponent’s hands free kits for phones. 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 printers are included in the broad category of the opponent’s apparatus for reproduction of images. Therefore, they are identical.

The contested peripherals for computers include, as a broader category the opponent’s computer keyboards. Since the Opposition Division 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

The contested clothing for men, women and children, in particular vests, sweatshirts, stockings, shirts, coats, belts, ties, handkerchiefs, scarves, gloves, waterproof clothing, trousers, swimming costumes and combinations; clothing of leather, and of imitations of leather; waist belts; technical clothing for motorists, motorcyclists and cyclists; technical clothing for sports, in particular for horse riding, golf, swimming, boating, sailing, tennis, fencing, skiing are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested footwear for men, women and children, in particular slippers, shoes and boots are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

Contested services in Class 35

The contested business management, office functions are identically contained in both lists of services in Class 35.

The contested real estate auctions, telephone and television auctions, organisation of online auctions are included in the broad category of the opponent’s auctioneering. Therefore, they are identical.

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 and services found to be identical are partly directed at the public at large including professionals (e.g. the IT goods in Class 9) and partly at business customers with specific professional knowledge or expertise only (e.g. the business support services in Class 35). Their degree of attention may vary from low to high depending on the price, (specialised) nature, or terms and conditions of the purchased or contracted goods and services. For example, where the consumer is likely to pay a low attention when purchasing the often inexpensive daily consumer goods such as the stockings of Classes 25 (see 15/06/2010, T‑547/08, Strumpf, EU:T:2010:235, § 43), he/she may be highly attentive when acquiring the services of a consultancy firm.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is 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 earlier mark is a figurative mark consisting of the word ‘RACE’ in italicised letters with a crown on top. Given the sheer size of the word ‘RACE’ vis-à-vis the image of the crown, this word clearly stands out as the dominant element of the earlier mark. The word ‘RACE’ is also distinctive, since it does not belong to the category of basic English words that a significant part of the relevant public in Spain would be familiar with. The crown, on the other hand, is a commonly used laudatory symbol of power, legitimacy, victory, triumph, honour and glory and, therefore, is lowly distinctive.

The contested sign is a figurative mark consisting of the words ‘EMBY RACE’ depicted in a particularly fancy and colourful typeface and the image of a gold medal bearing the head of a dog surrounded by race flags and a wreath. All these elements have more or less the same size. Therefore, this mark has no elements which are clearly more dominant (eye-catching) than others. The elements are also equal in terms of distinctiveness. The words ‘EMBY’ and ‘RACE’ have no meaning in Spanish. The figurative elements cannot be considered banal decorations nor do they have any descriptive or allusive meaning in relation to the goods and services, since they have nothing to do with dogs, dog races, car races or competitions in general.

Visually, a certain similarity between the signs cannot be denied due to the fact that they both contain the word ‘RACE’. However, the signs’ differentiating figurative and verbal elements (EMBY) give the marks a different structure and composition, which have the effect that the similarity conveyed by the common element ‘RACE’ is not that noticeable. The figurative element of the contested sign is rather striking, due to its size, distinctive character and location at the beginning of the sign. Further, taking into account that the word ‘RACE’ comes in second place after and under the word ‘EMBY and that these words have a particular and colourful design, overall the signs are visually similar to a low degree.

Aurally, the signs coincide in the pronunciation of the two-syllable-word /RA-CE/. What differentiates them is the two-syllable-word ‘EM-BY’ of the contested sign, since the figurative element of the earlier mark will not be pronounced being perceived as a purely decorative laudatory element. Nevertheless, the complete reproduction of the earlier mark in the contested sign – albeit in the second position – creates an average degree of oral similarity between the marks.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the signs’ figurative elements evoke completely different concepts, namely that of a crown versus a medal with an imprinted dog head surrounded by race flags and a wreath. Whilst it must be observed that the crown, due its common laudatory use in trade, does not have much impact conceptually, the figurative elements of the contested sign may be associated with dog races (the dog head and race flags), car races (the race flags) and/or victory (the medal and wreath). Therefore, the signs are conceptually not similar.

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

According to the opponent the earlier trade mark has a reputation in Spain in connection with part of the goods and services for which it is registered. It claims that that ‘RACE’ is extraordinarily well known in the field of vehicles, their drivers and passengers (insurance, travel, driving school services, roadside assistance, repairs, etc) and also in the area of leisure activities such as those related to travel, practice of sports (such as monitoring, cycling, motorcycling, etc.), sporting events, etc.

Enhanced distinctiveness cannot be validly claimed for goods or services which are not the basis of the opposition under Article 8(1)(b) EUTMR. In the present case only the insurance services mentioned above are invoked as a basis of the opposition. All the other goods or services for which the opponent claims a reputation are not covered by the goods and services in Classes 9, 18, 25, 28, 35 and 36 on which the opposition is based (see section b. above). Therefore, only the insurance services of Class 36 can be taken into account.

However, it must be noted that an enhanced distinctiveness or reputation of the earlier mark for insurance would not increase the likelihood of confusion (11/11/1997, C‑251/95, ‘Sabel’), since the goods or services that have been found to be identical or similar in section a) have no relevant points in common with these services. The expertise needed to provide the insurance services is entirely different from the expertise required to produce the contested goods or render the contested services. The goods and services in question satisfy very different needs, are offered by specialised companies in their corresponding fields, are not interchangeable and therefore not in competition. The mere fact that the contested goods can be the subject of insurance services is not enough to render them similar, since the public will not expect them to be offered by the same company.

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 in relation to any of the goods at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite a weak figurative element.

5. Global assessment, other arguments and conclusion

The risk that the relevant public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion. The existence thereof must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11.11.1997, C-251/95, Sabèl, EU:C:1997:528, § 22), in particular the degree of similarity between the trade marks and between the goods or services covered, the distinctiveness of the earlier mark (22.06.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19-20), and also the likelihood of association between the signs (11.11.1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (see to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528§ 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested goods and services were found identical to those of the earlier mark and are directed at a public whose level of attention may vary from low to high. The marks in dispute have been found to be visually similar to a low degree, aurally similar to an average degree, and conceptually not similar mainly due to the concepts of the figurative elements.

In this respect, it should be noted that, where marks are phonetically and visually similar, for example, because one of the two words which alone constitute a word mark is identical, both visually and aurally, to the single word which constitutes an earlier word mark, they are similar overall, unless there are significant conceptual differences (25/11/2003, T-286/02, ‘Kiap Mou’, EU:T:2003:311, § 38-39, 21/09/2012, T‑278/10, ‘Western Gold’, EU:T:2012:459, § 58, 13/09/2007, C-234/06, ‘Bainbridge’, EU:C:2007:514, § 34).

In the present case the exception applies. The clear and specific meaning of at least the figurative element of the contested application is such as to counteract the visual and aural similarities noted above (13/09/2007, C‑234/06, ‘Bainbridge’, EU:C:2007:514, § 34, of 14/10/2003, T-292/01, 14/10/2003, T-292/01, ‘Bass’, EU:T:2003:264, § 54, of 22/06/2004, T‑185/02, ‘Picaro’, EU:T:2004:189, § 56 and of 27/10/2005, T-336/03, ‘Mobilix’, EU:T:2005:379, § 80-81). Since the words ‘EMBY’ and ‘RACE’ have no meaning in Spanish, the relevant consumers will mainly remember the mark by this figurative element, for example as the mark with the dog medal or racing dog.

Whilst it is true that this element nor the crown in the earlier mark has no impact on the aural perception of the marks and that the public may not be very attentive when buying some of the goods in Class 25, it must be noted that the degree of aural similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually visually perceives the mark designating those goods (14/10/2003, T-292/01, ‘Bass’, EU:T:2003:264, § 55, 28/06/2005, T-301/03, ‘Canal Jean’, EU:T:2005:254, § 55 and 08/02/2007, T-88/05, ‘Nars’, EU:T:2007:45, § 69).

This is clearly the case for the goods in Class 25 and some of the goods in Class 9 such as the safety helmets for motorcyclists and motorists; Spectacles and sunglasses. But also the IT goods of Class 9 or business support services of Class 35 are normally purchased after a comprehensive examination of their specifications and technical characteristics or terms and conditions, firstly upon the basis of information that appears in specialist catalogues or on the internet, and then at the point of sale. As mentioned in section b) above, the consumers tend to be more attentive when purchasing such goods and services and, therefore, are not likely to acquire them merely on recommendation or after a discussion with a salesperson.

Therefore, in light of all the factors that have been taken into account for the purposes of assessing the likelihood of confusion, and bearing in mind, in particular, that no enhanced distinctiveness of the earlier mark was proven, it must be concluded that the differing elements of the marks, especially the concept and representation of the figurative element of the contested sign, are clearly perceptible and safely outweigh the similarities between the signs, resulting in a different overall impression of the marks. Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Considering all the above, even when used in relation to identical goods or services there is no likelihood of confusion on the part of the public between the earlier mark and contested sign. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Adriana VAN ROODEN

Reiner SARAPOGLU

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.