OPPOSITION No B 2 751 751

Derby Cycle Werke GmbH, Siemensstr. 1-3, 49661 Cloppenburg, Germany (opponent), represented by Jabbusch Siekmann & Wasiljeff, Hauptstr. 85, 26131 Oldenburg, Germany (professional representative)

a g a i n s t

Robest S.L., Avenida Bertrán i Güell, 41-51, 08850 Gava (Barcelona), Spain (applicant), represented by Elisabet Alier Benages, Consell de Cent 417 2° 1a, 08009 Barcelona, Spain (professional representative).

On 26/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 751 751 is upheld for all the contested goods, namely:

Class 12: Fitted bicycle covers.

2. European Union trade mark application No 15 407 208 is rejected for all the contested goods. It may proceed for the remaining goods.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 407 208 , namely against some of the goods in Class 12. The opposition is based on European Union trade mark registration No 5 344 941 ‘Raven’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 5 344 941 ‘Raven’ (word mark).

The date of filing of the contested application is 05/05/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 05/05/2011 to 04/05/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 12: Bicycles and their parts.

The applicant requested that the opponent demonstrate use of the earlier mark in relation to the contested goods, namely fitted bicycle covers. However, as explained above, Article 47(2) and (3) EUTMR specify that use of the earlier mark has to be proven ‘in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition’. In this case, the proof of use has thus to be examined in relation to ‘bicycles and their parts’. Therefore, the applicant’s claim must be dismissed.

According to Article 10(3) EUTMDR (formerly Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 23/05/2017, in accordance with Article 10(2) EUTMDR (formerly Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent, after several requests for extensions of the time limit, until 05/10/2017 to submit evidence of use of the earlier trade mark. On 05/10/2017, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• 10 invoices issued by the opponent and addressed to clients in France, Germany, Italy, Portugal and Spain; they refer to products named ‘Raven’ and are dated from the relevant period (i.e. from 2014 to 2016) and after (one being dated in 2017); there is no concrete information concerning the kind of products, but the mark ‘RAVEN’ is clearly listed in the invoices;

• an affidavit, dated 02/10/2017, issued by one of the opponent’s company officers with statutory authority, according to which the earlier mark has been used in relation to bicycles; it gives an overview of sales for 2014 to 2017 in European countries and refers to extracts from a website, copies of invoices and a copy of the dealer book for 2016;

• undated extracts from the website www.focus-bikes.com displaying mountain bikes together with the mark ‘RAVEN’: ;

• pictures of bicycles bearing the mark ‘Raven’ in figurative form, alone or accompanied by the word ‘MAX’ (e.g. );

• a catalogue of Raven’s bicycles, dated 2016;

Assessment of the evidence

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

As far as the affidavit is concerned, Article 10(4) EUTMDR (formerly Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

As regards the place of use, the evidence filed in the present case, in particular the invoices, shows that the earlier mark has been used in France, Germany, Italy, Portugal and Spain. This can be inferred from the currency mentioned (euros) and the addresses indicated in the invoices.

Considering that these countries constitute a significant part of the European Union, it has to be considered that the use of the earlier mark in these countries is use in the European Union (see, by analogy, 15/07/2015, T‑398/13, TVR ITALIA, EU:T:2015:503, § 57; 30/01/2015, T‑278/13, now, EU:T:2015:57). Therefore, the evidence relates to the relevant territory.

As regards the time of use, most of the evidence, namely the invoices and the catalogue, is dated within the relevant period, or refers to the relevant period (the affidavit). Moreover, the Opposition Division considers that the evidence dated outside the relevant period (the last invoice) is also relevant, as it corroborates the evidence that is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account.

Taken in combination, the invoices and the catalogue, supported by the information included in the affidavit, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

Although the invoices are not numerous, they are dated at regular intervals within the relevant period (namely 2014, 2015 and 2016) and they are corroborated by the figures included in the affidavit. Therefore, it is concluded that the documents show sufficient commercial volume of use.

Therefore, the extent of use is proven.

Regarding the nature of use, in the context of Article 10(3) EUTMDR (formerly Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

In this regard, it appears from the documents submitted by the opponent that the evidence shows use of the word mark ‘Raven’ in accordance with its function and as registered, since its depiction on the goods in colour (red or white) in title case letters, together with non-distinctive words (e.g. ‘MAX’) does not alter the distinctive character of the earlier mark.

The applicant claims that the opponent’s goods are sold under the mark ‘FOCUS’ and that ‘RAVEN’ is used only as the name of a specific model of bikes. However, it is noted from the evidence submitted by the opponent that the name ‘RAVEN’ is used as a trade mark by the opponent, since it is affixed to the goods. The fact that the name ‘FOCUS’ is also used in relation to the marketed goods is irrelevant.

However, the evidence submitted by the opponent does not show genuine use of the trade mark for all the goods of the earlier trade mark on which the opposition is based. Furthermore, the evidence shows use of the mark for bicycles, which is acknowledged by the applicant itself.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 12: Bicycles.

Taking into account the evidence in its entirety, it is sufficient to prove genuine use of earlier European Union trade mark No 5 344 941 ‘Raven’ during the relevant period in the relevant territory, namely the European Union, for bicycles. However, the evidence does not show any use for the remaining goods, parts of bicycles.

Therefore, the Opposition Division will consider only the abovementioned goods in its further examination of the opposition.

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

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

Class 12: Bicycles.

The contested goods are the following:

Class 12: Fitted bicycle covers.

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 contested fitted bicycle covers are similar to a high degree to the opponent’s bicycles, since they often have the same manufacturer, distribution channels and relevant public, contrary to the applicant’s claims. It is common for some accessories to also be produced by the manufacturer of the main product. Furthermore, they are complementary.

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 found to be highly similar are directed at the public at large.

The degree of attention is considered to vary from average to high, depending on the price and the sophistication (the model) of the goods.

3. The signs

Raven
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 earlier mark is a word mark consisting of the word ‘Raven’, while the contested sign is a figurative mark composed of the word ‘Rayen’ depicted in bold red letters.

The word ‘Raven’ will be understood by the English-speaking part of the public as referring to ‘a large heavily built crow with mainly black plumage, feeding chiefly on carrion’ (information extracted from English Oxford Dictionary Online). For the other part of the public, it will be perceived as a fanciful term. Since it does not convey any meaning with respect to the relevant goods, it has a normal degree of distinctiveness for all parts of the public.

The word ‘Rayen’ has no meaning for the relevant public and is, therefore, distinctive. The stylisation of the letters is quite standard and the colour red has no concept in relation to the relevant goods; therefore, consumers will attach no trade mark significance to the depiction of the contested sign.

Visually, the signs coincide in the string of letters ‘RA*EN’, identically included in both marks and placed in the same position. They differ only in the substitution of the middle letter, ‘V’, of the earlier mark with the letter ‘Y’ in the contested sign and in the stylisation of the element of the contested sign.

However, taking into account, on one hand, that the differing letter is placed in the middle of the word, and, on the other, that visually the two letters ‘V and ‘Y’ are similar, as pointed out by the opponent, this visual difference has a minor impact. That is because consumers generally tend to focus on the beginning of a sign when they encounter a trade mark and the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘RA*’EN’, present identically in both signs. The pronunciation differs in the substitution of the sound of the letter ‘V’ in the earlier mark with ‘Y’ in the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, although the English-speaking part of the public in the relevant territory will perceive the meaning of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for that part of the public.

For the non-English speakers, 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.

4. 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 for which it is registered from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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.

Account is taken of the fact that 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).

The goods are highly similar, the degree of attention of the relevant public is average and the distinctiveness of the earlier mark is normal.

Overall, the signs are visually and aurally highly similar to the extent that they differ only in their middle letter, while coinciding in the other four. They also differ in the stylisation of the contested sign in bold red letters. However, this graphical difference is of secondary importance in the sign, as stated above in section c) of this decision. Conceptually, the signs are not similar for a part of the relevant public, and the semantic content does not influence the assessment of the similarity of the signs for the other part of the public.

It follows that the differences between the signs are not sufficient to counterbalance their similarities and to enable consumers to safely distinguish between the signs.

In its observations, the applicant argues that the contested sign has a reputation and filed various items of evidence to substantiate this claim.

However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

The same reasoning applies to the applicant’s claim that the contested sign is part of a family of marks all characterised by the presence of the word ‘Rayen’.

Consequently, the applicant’s abovementioned arguments are dismissed.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 344 941. It follows that the contested trade mark must be rejected for all the contested goods.

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 (formerly Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Carmen SÁNCHEZ PALOMARES

Julie, Marie-Charlotte HAMEL

Cristina CRESPO MOLTÓ

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.