OPPOSITION No B 3 012 088

Jeans Centre B.V., Van Hennaertweg 6, 2952 CA Alblasserdam, Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices, 2e étage, Anna van Buerenplein 21A, 2595DA The Hague, Netherlands (professional representative)

a g a i n s t

Paradise Motorcycles, 9 Avenue de la Grande Armée, 75116 Paris, France (applicant).

On 19/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 012 088 is partially upheld, namely for the following contested goods:

Class 25: Motorcyclists’ clothing of leather; motorcycle gloves; waterproof suits for motorcyclists; gloves [clothing]; ski gloves; gloves for cyclists; winter gloves; riding gloves; snowboard gloves; camouflage gloves; driving gloves; gloves including those made of skin, hide or fur; gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices; garments for protecting clothing; headgear; footwear; clothing; bandanas [neckerchiefs]; headbands [clothing]; cycling caps; caps with visors; sports caps; head scarves; muffs [clothing]; fur muffs; mantillas; sun visors.

2. European Union trade mark application No 17 212 507 is rejected for all the above goods. It may proceed for the remaining, non-contested goods, as well as for the following contested goods in Class 25: Cap peaks.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 212 507 for the word mark ‘STUDIO PILOTE’, namely against all the goods in Class 25. The opposition is based on Benelux trade mark registration No 441 545 for the word mark ‘PILOT’. 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

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

Class 25: Clothing articles, including boots, shoes and slippers.

The contested goods are the following:

Class 25: Motorcyclists’ clothing of leather; motorcycle gloves; waterproof suits for motorcyclists; gloves [clothing]; ski gloves; gloves for cyclists; winter gloves; riding gloves; snowboard gloves; camouflage gloves; driving gloves; gloves including those made of skin, hide or fur; gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices; garments for protecting clothing; headgear; footwear; clothing; bandanas [neckerchiefs]; headbands [clothing]; cycling caps; caps with visors; sports caps; head scarves; muffs [clothing]; fur muffs; mantillas; sun visors; cap peaks.

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

The term ‘including’, used in the opponent’s and the applicant’s lists of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’, which has the same function as ‘including’, see a reference in 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 motorcyclists’ clothing of leather; motorcycle gloves; waterproof suits for motorcyclists; gloves [clothing]; ski gloves; gloves for cyclists; winter gloves; riding gloves; snowboard gloves; camouflage gloves; driving gloves; gloves including those made of skin, hide or fur; gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices; garments for protecting clothing; clothing; bandanas [neckerchiefs]; muffs [clothing]; fur muffs are clothing and pieces of clothing, which are identically contained (as synonyms) in the opponent’s list or included in the broad category of the opponent’s clothing articles. These goods are identical.

Account must be taken of the opponent’s category of goods in Class 25, namely clothing articles, including boots, shoes and slippers, and some consideration has to be given to that wording. The term ‘clothing’ (‘Kledingstukken’ in Dutch, the language of the earlier registration) in its most traditional understanding relates to garments worn on the body such as t-shirts, shirts, coats, pants, skirts and dresses, whereas ‘footwear’ is the term covering articles worn on the feet, for instance shoes and boots. However, in the present case it may be inferred from the opponent’s list of goods that the opponent’s intention was for the scope of protection of its mark also to cover footwear articles such as boots, shoes and slippers.

Bearing in mind the above findings, the contested footwear overlaps with the opponent’s broad category of clothing articles, including boots, shoes and slippers, to the extent that it includes footwear articles (boots, shoes and slippers), as indicated by the opponent. These goods are, therefore, identical.

The contested headgear; headbands [clothing]; cycling caps; caps with visors; sports caps; head scarves; mantillas; sun visors are items and accessories worn on the head. Like the opponent’s clothing articles, they also have the general purpose of covering parts of the body to give them the necessary protection from outdoor conditions. These goods also have the same distribution channels, relevant public and manufacturers. They are considered similar.

However, the contested cap peaks are by nature parts of headgear, namely the part at the front of a cap that sticks out above the eyes, and, as such, these goods target manufacturers of headgear rather than end consumers. Furthermore, they have different distribution channels and manufacturers from the opponent’s goods. Given their specialised character and in the absence of any convincing relation to the opponent’s clothing or footwear articles, the goods are considered dissimilar.

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 identical or similar are directed at the public at large. The degree of attention is average.

3. The signs

PILOT	STUDIO PILOTE
Earlier trade mark	Contested sign

The relevant territory is Benelux. Consequently, the relevant public to be considered in the comparison of the signs consists of Dutch, French, and German speakers.

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 elements ‘PILOT’ of the earlier mark and ‘PILOTE’ of the contested sign will be broadly associated with ‘a person who is qualified to operate an aircraft or spacecraft in flight or a Formula 1 race driver’, since they are similar to equivalent words in the relevant territory, in particular ‘piloot’ (Dutch)’, ‘pilote’ (French) and ‘Pilot’ (German). Since the words ‘PILOT’ and ‘PILOTE’ may suggest or allude to the purpose of the goods — for instance, some consumers may perceive them as hinting that the goods in conflict are potentially in a style associated with aviation or racing — these two elements are considered of below average distinctiveness in both signs.

The element ‘STUDIO’ of the contested sign has a polysemic character but, more specifically, it may refer to a workplace for designers and artisans engaged in conceiving, designing and developing new products or objects. Bearing in mind that the relevant goods are clothing, footwear and headgear articles, namely designer articles and fashion goods usually created by designers, this element may indicate the place where such articles are devised, and in a broader sense it may refer to a fashion/design studio; consequently, this element is considered of limited distinctiveness in relation to the goods on its own. Although the word ‘STUDIO’ may be meaningful, the expression ‘STUDIO PILOTE’ perceived as a whole does not convey any particular message to consumers.

Visually and aurally, the signs coincide in the letters ‘PILOT*’, which constitute the entire earlier mark and the majority of the second element in the contested sign. They differ in the additional last letter, ‘E’, in the corresponding element of the contested sign, as well as in the preceding word, ‘STUDIO’, neither of which has any counterpart in the earlier mark. In addition, at least for a part of the public (the French speakers) the word ‘PILOTE’ in the contested sign may be pronounced identically with or at least highly similarly to the word ‘PILOT’, which constitutes the entire earlier mark. Therefore, bearing in mind the distinctiveness of the different components in the signs, as established above, the signs are considered visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, as well as to their distinctiveness. As the signs will be associated with the same meaning, produced by the almost identical verbal elements ‘PILOT’/‘PILOTE’, and considering the suggestive character of the word ‘STUDIO’, the signs are conceptually similar to an average degree.

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 may convey some meaning suggesting the purpose or style of the goods in question (clothing and footwear) from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as somewhat lower than average.

5. Global assessment, other arguments and conclusion

The goods are partly identical and similar and partly dissimilar, and the degree of attention is average. The earlier mark has a lower than average degree of distinctiveness.

Generally, the distinctiveness of the earlier mark is only one of the several factors that have to be weighed up by assessing the likelihood of confusion. 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). In the present case, the identity and similarity between the goods in question have to be especially considered, as well as the target public of these goods, namely the general consumer.

The signs are considered visually, aurally and conceptually similar to an average degree to the extent that they coincide in the letter string ‘PILOT*’, which forms the entire earlier mark and a large part of the contested sign. That is to say, the earlier mark is completely reproduced in the contested sign, albeit with an additional final letter ‘E’. Nevertheless, 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 difference in one letter in the last part of the sign may be easily overlooked or misheard (if pronounced at all), especially when both verbal elements convey the same concept to the relevant public.

As established above, the coinciding verbal elements ‘PILOT’ and ‘PILOTE’ have a degree of distinctiveness that is below average for the goods in Class 25 due to their suggestive or allusive nature. Generally, even though a commonality in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or have insignificant visual impact and the overall impression of the marks is similar. In addition to the visually and aurally (for a part of the public) differing vowel ‘E’ at the end of the contested sign’s verbal element, the signs show a further difference in the first verbal element of the contested sign, namely the word ‘STUDIO’. It has been mentioned previously that this word may have limited inherent distinctiveness for the goods in question, as it directly informs consumers about a workplace where they could be designed and encountered. Moreover, the entire expression ‘STUDIO PILOTE’ does not constitute a meaningful unit and, therefore, does not transmit a clear message to consumers that will be picked as a whole and remembered. On the contrary, consumers may tend to perceive the two words of the contested sign as two separate concepts; in particular, even though the word ‘STUDIO’ is not conceptually linked to the word ‘PILOTE’, it may still serve to suggest that the latter is the name of a studio. Consequently, ‘STUDIO’ might be seen as subordinate within the expression, namely as a word used to specify ‘PILOTE’.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration.

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

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) 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

Richard BIANCHI

Manuela RUSEVA

Eva Inés PÉREZ SANTONJA

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.