OPPOSITION No B 3 014 738

A. Winther A/S, Rygesmindevej 2 8653, Them, Denmark (opponent), represented by Chas. Hude A/S, H. C. Andersens Boulevard 33, 1780 København V, Denmark (professional representative)

a g a i n s t

Popal Fietsen Nederland B.V., Maarssenbroeksedijk 7, 3542dl Utrecht, Netherlands (applicant).

On 10/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 014 738 is partially upheld, namely for the following contested goods:

Class 12: Bicycles; bicycle carriers; bicycle kickstands; motorised bicycles; bicycle saddles; bicycle handlebar grips; bicycle training wheels; direction indicators for bicycles; saddle covers for bicycles; pedal bicycles; bicycle mudguards; hubs for bicycle wheels; covers for handgrips of cycles; inner tubes for bicycle tyres; brake levers for cycles; drivetrains for bicycles; luggage carriers for cycles; chain wheels for bicycles; gears for bicycles; bicycle wheels; bicycle brake lever grips; chain guards for bicycles; bicycle tyres; spindles of bicycles; freewheels for bicycles; shock absorbers for bicycles; rack trunk bags for bicycles; bicycle horns; structural parts of bicycles; hydraulic disc brakes for bicycles; toe straps for use on bicycles; toe clips for use on bicycles; covers for foot pedals on cycles; bicycle stabilisers; fitted bicycle covers; air pumps for bicycles; mudguards for bicycles; trailers for transporting bicycles; bicycle chains; fittings for bicycles for carrying beverages; air pumps for bicycles for the inflation of tyres; fittings for bicycles for carrying luggage.

2. European Union trade mark application No 17 297 615 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 297 615 . The opposition is based on European Union trade mark registration No 9 422 965 ‘KANGAROO BIKE’ and on non-registered trade marks used in the course of trade in Denmark and the United Kingdom. The opponent invoked Article 8(1)(b) and Article 8(4) 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 12: Children’s tricycles and bicycles; adult bicycles; carrier cycles; cycle trailers, prams (baby carriages) for several children, bicycle seats for children.

The contested goods are the following:

Class 12: Bicycles; bicycle carriers; bicycle kickstands; motorised bicycles; bicycle saddles; bicycle handlebar grips; bicycle training wheels; direction indicators for bicycles; saddle covers for bicycles; pedal bicycles; bicycle mudguards; hubs for bicycle wheels; covers for handgrips of cycles; inner tubes for bicycle tyres; brake levers for cycles; drivetrains for bicycles; luggage carriers for cycles; chainwheels for bicycles; gears for bicycles; bicycle wheels; bicycle brake lever grips; chain guards for bicycles; bicycle tyres; spindles of bicycles; freewheels for bicycles; shock absorbers for bicycles; rack trunk bags for bicycles; bicycle horns; structural parts of bicycles; hydraulic disc brakes for bicycles; toe straps for use on bicycles; toeclips for use on bicycles; covers for foot pedals on cycles; bicycle stabilisers; fitted bicycle covers; air pumps for two-wheeled motor vehicles or bicycles; mudguards for two-wheeled motor vehicles or bicycles; trailers for transporting bicycles; bicycle chains; fittings for bicycles for carrying beverages; air pumps for bicycles for the inflation of tyres; fittings for bicycles for carrying luggage.

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 bicycles include, as a broader category, the opponent’s adult bicycles. 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 motorised bicycles overlap with the opponent’s adult bicycles. Therefore, they are identical.

The contested luggage carriers for cycles; fittings for bicycles for carrying luggage overlap with the opponent’s cycle trailers. Therefore, they are identical.

The contested rack trunk bags for bicycles are usually specially designed (material) bags that attach to different parts of the frame, or the luggage carrier frame, of a bicycle. They are usually shaped to fit under the seat, over the handlebars, etc. These goods are similar to the opponent’s cycle trailers, as they usually have the same relevant public and distribution channels. Furthermore, they are complementary.

The contested bicycle carriers; bicycle kickstands; bicycle handlebar grips; bicycle training wheels; direction indicators for bicycles; pedal bicycles; bicycle mudguards; hubs for bicycle wheels; covers for handgrips of cycles; inner tubes for bicycle tyres; brake levers for cycles; drivetrains for bicycles; chain wheels for bicycles; gears for bicycles; bicycle wheels; bicycle brake lever grips; chain guards for bicycles; bicycle tyres; spindles of bicycles; freewheels for bicycles; shock absorbers for bicycles; trailers for transporting bicycles; bicycle chains; fittings for bicycles for carrying beverages; air pumps for bicycles for the inflation of tyres; bicycle horns; structural parts of bicycles; hydraulic disc brakes for bicycles; toe straps for use on bicycles; toe clips for use on bicycles; covers for foot pedals on cycles; bicycle stabilisers; fitted bicycle covers; air pumps for bicycles; mudguards for bicycles; bicycle saddles; saddle covers for bicycles are a wide range of components, parts and accessories for bikes. These goods are similar to at least a low degree to the opponent’s adult bicycles, as they can usually have the same producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested air pumps for two-wheeled motor vehicles; mudguards for two-wheeled motor vehicles are very specific accessories for two-wheeled motor vehicles such as motorbikes. These goods do not have anything in common with any of the opponent’s goods. In particular, they have clearly different purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Therefore, they are 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 are directed at the public at large as well as at business customers with specific professional knowledge or expertise in the field of bikes. The public’s degree of attention is considered to be average.

3. The signs

KANGAROO BIKE
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 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 figurative sign contains the verbal element ‘CANGOO’ in combination with the stylised image of a kangaroo. Taking into account the clear concept conveyed by this figurative element (i.e. that of a kangaroo) and the visual and aural affinity between the words ‘CANGOO’ and ‘KANGAROO’, it is reasonable to assume that the contested sign’s verbal element will be perceived by the English-speaking consumers as a misspelling of the first word of the earlier mark, ‘KANGAROO’, that is, ‘a large Australian animal which moves by jumping on its back legs’ (information extracted from Collins English Dictionary on 21/11/2018 at https://www.collinsdictionary.com/dictionary/english/kangaroo). Since the meaning conveyed by these elements may enhance the conceptual similarities between the marks, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, for which the likelihood of confusion will be higher. For this part of the public, these elements are distinctive to a normal degree, since their meanings are not directly related to the relevant goods in a clear way that could impair their distinctiveness.

The earlier mark’s second word, ‘BIKE’, will be perceived by the relevant public as ‘a vehicle with two wheels driven by sitting on it and pushing two pedals’. Bearing in mind that the relevant goods are bicycles and a wide range of components, parts and accessories for bikes, this element is non-distinctive in relation to all of the relevant goods.

The contested sign’s figurative element consisting of the stylised image of a kangaroo is, for the reasons set out above, inherently distinctive for the relevant goods. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The contested trade mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘*ANG**OO’. However, they differ in the letters of the earlier trade mark’s word ‘KANGAROO’ that are not present in the word ‘Cangoo’, in the earlier mark’s second word, ‘BIKE’, and in the stylisation and figurative element depicting a stylised kangaroo in the contested sign.

Taking into account the abovementioned principles and the assessment of the distinctive elements of the signs, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘(K/C)ANG**OO’. However, they differ in the sound of letters of the word ‘KANGAROO’ that are not present in the word ‘Cangoo’, as well as in the sound of the earlier trade mark’s second word, ‘BIKE’.

Taking into account the abovementioned principles and the assessment of the distinctive elements of the signs, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Specifically, the signs coincide in the concept of ‘kangaroo’ conveyed by the earlier trade mark’s first word, ‘KANGAROO’, and by the combination of the word ‘CANGOO’ and the stylised kangaroo in the contested sign. The signs differ only in the descriptive meaning of the earlier trade mark’s word ‘BIKE’.

As the signs will be associated with similar meanings and the different word is descriptive, they are conceptually highly 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

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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 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 may be offset by a lower degree of similarity between the marks, and vice versa (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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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.

In the present case, the goods are partly identical, partly similar to various degrees and partly dissimilar. They target the general and a professional public whose degree of attention is considered average.

The trade marks are visually similar to an average degree, while they are aurally and conceptually highly similar. In particular, the earlier trade mark’s most distinctive element, ‘KANGAROO’, is visually and aurally similar to the earlier mark’s verbal element ‘CANGOO’. Moreover, the meaning of the earlier trade mark’s first verbal element, ‘KANGAROO’, is identically conveyed by the contested sign.

Taking all of the above into account, the Opposition Division considers that the differences between the signs — which mainly lie in the earlier mark’s descriptive elements and in the contested mark’s stylisation — are clearly not sufficient to outweigh the visual, aural and conceptual similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical or similar goods, is likely to think that the goods originate from the same undertaking or from economically linked undertakings.

As regards the goods that are similar to only a low degree, it must be kept in mind that 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 average degree of visual similarity and high degree of aural and conceptual similarity between the signs are clearly sufficient to offset the low degree of similarity between some of the goods. Therefore, the opposition is successful and the contested trade mark must also be rejected in relation to those goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 422 965. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

The Opposition Division will continue the examination of the opposition in relation to Article 8(4) EUTMR and in respect of the contested goods that have been found to be dissimilar to the opponent’s goods under Article 8(1)(b) EUTMR, namely air pumps for two-wheeled motor vehicles; mudguards for two-wheeled motor vehicles.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opponent invokes Article 8(4) EUTMR on the basis of the non-registered trade marks used in the course of trade in Denmark and the United Kingdom.

As a preliminary remark, the Opposition Division notes that, in the notice of opposition of 22/12/2017, the opponent claimed that the earlier rights in question are used in the course of trade in relation to the following goods:

Bicycles; bicycle carriers; bicycle kickstands; motorised bicycles; bicycle saddles; bicycle handlebar grips; bicycle training wheels; direction indicators for bicycles; saddle covers for bicycles; pedal bicycles; bicycle mudguards; hubs for bicycle wheels; covers for handgrips of cycles; inner tubes for bicycle tyres; brake levers for cycles; drivetrains for bicycles; luggage carriers for cycles; chain wheels for bicycles; gears for bicycles; bicycle wheels; bicycle brake lever grips; chain guards for bicycles; bicycle tyres; spindles of bicycles; freewheels for bicycles; shock absorbers for bicycles; rack trunk bags for bicycles; bicycle horns; structural parts of bicycles; hydraulic disc brakes for bicycles; toe straps for use on bicycles; toe clips for use on bicycles; covers for foot pedals on cycles; bicycle stabilisers; fitted bicycle covers; air pumps for two wheeled motor vehicles or bicycles; mudguards for two-wheeled motor vehicles or bicycles; trailers for transporting bicycles; bicycle chains; fittings for bicycles for carrying beverages; air pumps for bicycles for the inflation of tyres; fittings for bicycles for carrying luggage.

It is evident, however, that these goods are the contested goods. By contrast, in its submission of 01/06/2018, the opponent indicated that the earlier rights in question are used in the course of trade in relation to only bicycles. In addition, the opponent specified that the submission of proof of use of its earlier right in Denmark concerns bicycles. Consequently, what is stated in the notice of opposition constitutes an obvious mistake.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested trade mark was filed on 03/10/2017. Therefore, the opponent was required to prove that the signs on which the opposition is based were used in the course of trade of more than local significance in Denmark and the United Kingdom prior to that date. The evidence must also show that the opponent’s signs have been used in the course of trade for bicycles.

On 01/06/2018 and 04/06/2018, the opponent filed the following evidence, which was partially translated into English, in support of the opposition:

• EXHIBIT 9: a printout from the website whois.net proving that the domain name cargoobike.com was registered on 11/06/2012 by the opponent. This document must be read in conjunction with the two emails attached containing (i) the order of registering the website and (ii) a request to check, inter alia, if the name of the website’s owner (i.e. the opponent, A. Winther A/S) was correct.

• EXHIBIT 10: several printouts of the opponent’s and other Danish users’ Instagram® profiles displaying different models of bikes commercialised under the trade mark ; this mark is clearly displayed on the products themselves ( ) and used in its denominative form within the product descriptions (in Danish). The Instagram® posts are dated from 2013 to 2018. The evidence attached also shows a ‘CARGOO’ bike co-branded with the fashion magazine trade mark ‘DANSK’ for Copenhagen Fashion Week in 2014.

• EXHIBIT 11: an extract from a contract proving that the opponent participated at the Danish CKM fair in 2013. In addition, the opponent submitted several Instagram® posts showing the trade mark being displayed in relation to bikes at (i) CKM fairs (Denmark), (ii) the Baby og Småbørnsmessen fair (Denmark) and (iii) the Copenhagen Bike Show. This evidence relates to the period 2013-2018.

• EXHIBIT 12: samples of price lists and catalogues (in Danish) concerning the opponent’s bikes, with the trade mark ‘cargoo’ clearly displayed in relation to such goods: . The evidence refers to the period 2014-2015. The opponent also submitted several samples of emails to Danish customers from the period 2015-2016.

• EXHIBIT 13: price list samples (in Danish) from the period 2013-2017 displaying the prices of ‘cargoo’ bikes. The trade mark ‘cargoo’ is shown in relation to bikes, inter alia, as follows: .

• EXHIBIT 14: a flyer sample in both Danish and English, printed in 2015, displaying, inter alia, the trade mark and its denominative form in relation to bikes. The opponent also submitted an invoice concerning the publication of this flyer.

• EXHIBIT 15: two invoices from 2014 and 2015 issued to Danish customers in Copenhagen for bikes under the sign ‘cargoo’. The invoices give relevant amounts.

Assessment of use of more than mere local significance in relation to the non-registered trade mark in the United Kingdom

None of the abovementioned documents refers to the territory of the United Kingdom. Therefore, the Opposition Division concludes that the evidence submitted by the opponent is clearly insufficient to prove that the earlier sign was used in the course of trade of more than local significance in the United Kingdom in connection with any of the goods on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as the United Kingdom non-registered trade mark is concerned.

Assessment of use of more than mere local significance in relation to the Danish non-registered trade mark

All of the abovementioned documents clearly show that the place of use of the non-registered trade mark is Denmark. This can be inferred from, inter alia, the language of the documents (Danish), some addresses in the invoices (all in Copenhagen) and the relevant sponsorship and advertising campaign (in Denmark) through which the sign was exposed to the public. Furthermore, the evidence clearly relates to bicycles. This is obvious from all of the catalogues, advertising materials and invoices, in which these goods are mentioned.

However, when evaluated as a whole, it is immaterial if the evidence actually shows use of more than local significance of the earlier non-registered trade mark in Denmark, as will become clear later in this decision. Consequently, the Opposition Division will leave this issue open and will proceed under the assumption that the opponent demonstrated use of more than mere local significance of the earlier non-registered Danish trade mark in relation to bicycles and will examine the second requirement.

2. The right under the applicable law

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

Non-registered marks are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

The opponent submits that the non-registered trade mark , assumed to be used in the course of trade in Denmark in relation to bicycles, confers the right to prohibit the use and/or registration of the contested mark, , under the Danish trade mark law.

In support of this claim, the opponent filed copies, in Danish, of the relevant trade mark law and jurisprudence in Denmark (Annexes 2-7). The opponent also submitted a translation into English of the Danish trade mark law, which states, inter alia, the following:

Article 3(1)(ii) of the Danish Trade Mark Act

Establishing a trade mark right

A trade mark right may be established by commencement of use of a trade mark in this country for the goods or services for which the trade mark has commenced to be used and for which it is continuously used.

Article 4(1)(ii) of the Danish Trade Mark Act

Contents of the trade mark right

The proprietor of a trade mark right shall be entitled to prohibit any person not having his consent from using any sign in the course of trade if the sign is identical with or similar to the trade mark, and the goods or services are identical or similar, if there exists a likelihood of confusion including a likelihood of association with the trade mark.

Article 15(4)(ii) of the Danish Trade Mark Act

A trade mark shall, moreover, not be registered if in consequence of use in this country a right has been obtained to an identical or confusingly similar trade mark or to another identical or confusingly similar sign used in the course of trade prior to the date of filing of the application for registration of the later trade mark or, where appropriate, the date of the priority claimed in respect of the application for registration of the later trade mark, if the proprietor of the earlier right may prohibit the use of the later trade mark.

It is clear from the wording of the relevant legal texts that the requirements for granting protection against subsequent rights are (i) the identity or similarity between the signs, (ii) the identity or similarity between the goods or services and (iii) the presence of a likelihood of confusion.

Therefore, the Opposition Division will now proceed to apply the criteria developed by the Courts and by the Office for the assessment of likelihood of confusion.

3. The opponent’s right vis-à-vis the contested trade mark

Likelihood of confusion

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.

According to the opponent, the non-registered Danish trade mark is confusingly similar to the contested application, . Specifically, the opponent states that ‘based on the high degree of similarity between the marks in question and the identical goods, it seems clear that the contested mark is confusingly similar to the Opponent’s marks. On this background, the Opponent requests that the contested mark is rejected for all the conflicting goods’.

1. The goods

The opposition is directed against the following contested goods, namely those that have been found to be dissimilar to the opponent’s goods under Article 8(1)(b) EUTMR:

Class 12: Air pumps for two-wheeled motor vehicles; mudguards for two-wheeled motor vehicles.

The opponent’s non‑registered trade mark is assumed to be used in the course of trade for bicycles.

The contested air pumps for two-wheeled motor vehicles; mudguards for two-wheeled motor vehicles are very specific accessories for two-wheeled motor vehicles such as motorbikes. Although bicycles also have air pumps and mudguards, the origins of bicycles and motor vehicles, and their parts, are usually not the same and such goods seldom have the same channels of trade. In addition, although the goods have the same (general) purpose, they are not in competition with each other, as nobody would use a pump designed for a bicycle on a motor vehicle, and they are not complementary.

Therefore, the goods are dissimilar.

As seen above, the applicable regulation requires that the goods be similar for a finding of a likelihood of confusion. Since the goods are clearly dissimilar in the present case, one of the necessary conditions is not fulfilled, and the opposition based on Article 8(4) EUTMR must be rejected in relation to these 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. 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

María Belén IBARRA DE DIEGO	Aldo BLASI	Edith Elisabeth VAN DEN EEDE

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.