OPPOSITION No B 3 049 319

Motos Bordoy S.A., Av. Castellbisbal, 120, 08191 Rubí, Barcelona, Spain (opponent), represented by Isern Patentes y Marcas S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Maxtop Digital Technology Co. Ltd, B418, Minyou Technology Park, Baoyuan Rd., Xixiang St., Bao'an District, 518131 Shenzhen, People’s Republic of China (applicant), represented by Daniel Smart, 30 River View Drive, M7 1BG Salford, United Kingdom (professional representative).

On 08/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 319 is partially upheld, namely for the following contested goods:

Class 9: Wearable activity trackers; smartglasses; 3D spectacles; batteries, electric; battery chargers.

2. European Union trade mark application No 17 643 818 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 17 643 818 for the word mark ‘MACVOR’. The opposition is based on European Union trade mark registration No 16 498 974 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

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

Class 9: Helmets for motorcyclists; helmets for motorcyclists; helmets for bicycles; head protection; goggles; anti-glare glasses; dustproof glasses; sports glasses; cyclists' glasses; articles of protective clothing for wear by motorcyclists for protection against accident or injury.

Class 12: Passenger motor vehicles; automotive vehicles; wheeled vehicles; electric vehicles; parts and fittings for vehicles, except tyres, solid rubber tyres, wheels and tubes for tyres; land vehicles and conveyances; antitheft, security and safety devices and equipment for vehicles; parts and fittings for land vehicles, except tyres, solid rubber tyres, wheels and tubes for tyres; electric bicycles; motorised bicycles; pedal bicycles; racing bicycles; mountain bikes; children's bicycles; touring bicycles; tandem bicycles; folding bikes; buggies; mopeds; bicycles; go-carts; mini-bikes; motorbikes; motorcycles for motocross; motorized scooters; electrically operated scooters; tricycles; two-wheeled motor vehicles; electrically powered motor vehicles; powered vehicles for use on land; motorized scooters; side cars; structural components for motorcycles, except tyres, solid rubber tyres, wheels and tubes for tyres; motorized scooters; motorized scooters; bicycles; mountain bikes; delivery bicycles; bicycles; delivery tricycles; kite buggies; motorbikes; motorcycle engines; automotive vehicles; panniers for motorcycles; bags for bicycles; stands for motorcycles; shock absorbers for motorcycles; panniers for motorcycles; motorcycle foot pegs; cranks for motorcycles; motorcycle frames; motorcycle handlebars; motorcycle saddles; mudguards for motorcycles; luggage carriers for motorcycles; pedals for motorcycles; fitted motorcycle covers; twist grips for motorcycles; bells for motorcycles; motorcycle handlebars; front forks for motorcycles; front spacers [parts of motorcycles]; motorcycle grip tape; chains for driving motorcycles; sprockets for motorcycle drives; saddle covers for motorcycles; saddles for bicycles, cycles or motorcycles; shift levers [parts of motorcycles]; chainwheels for motorcycles; wheel rims for motorcycles; brake discs for motorcycles; air pumps for motorcycles; spokes for motorcycles; freewheels for motorcycles; warning horns for motorcycles; brake calipers [parts of motorcycles]; brake rotors [parts of motorcycles]; clutch cables [parts of motorcycles]; handle bar grips [parts of motorcycles]; brake pedals [parts of motorcycles]; hubs for vehicle wheels (motorcycles); shift levers [parts of motorcycles]; brake cables [parts of motorcycles]; saddle covers for bicycles or motorcycles; saddle covers for bicycles or motorcycles; headlight mounts [parts of motorcycles]; fork dust boots [parts of motorcycles]; front dash panels [parts of motorcycles]; handle bar dampers [parts of motorcycles]; handle bar control levers [parts of motorcycles]; bags for bicycles; luggage carriers for cycles; direction indicators for bicycles; bicycle stabilisers; shock absorbers for bicycles; spindles of bicycles; pumps for bicycles, cycles; bicycle bells; wheels for bicycles, cycles; dress guards for bicycles, cycles; brakes for bicycles, cycles; frames for bicycles, cycles; chains for bicycles, cycles; frames for bicycles, cycles; cycle saddles; drivetrains for bicycles; baskets adapted for bicycles; chains [bicycle parts]; bags for bicycles; bicycle handlebar grips; frames, for luggage carriers, for bicycles; forks [bicycle parts]; structural parts of bicycles; handle bar stems [bicycle parts]; covers for foot pedals on cycles; chain guards for bicycles; gear wheels [bicycle parts]; luggage carriers for cycles; disk wheels [bicycle parts]; brake levers for cycles; direction indicators for bicycles; direction indicators for bicycles; covers for bicycle saddles; covers for bicycle saddles; racing bicycles; metal bells for bicycles; bicycle carriers; handle bars for bicycles, cycles; pumps for bicycles, cycles; chainwheels for bicycles; brakes for bicycles, cycles; frames for bicycles, cycles; chains for bicycles, cycles; rims for wheels of bicycles, cycles; cycle saddles; spokes for bicycles, cycles; hubs for bicycle wheels; drive chains [bicycle parts]; fork crown covers [bicycle parts]; gear wheels [bicycle parts]; rims for wheels of bicycles, cycles; rims for wheels of bicycles, cycles; pumps for bicycles, cycles; mudguards for two-wheeled motor vehicles or bicycles; fittings for bicycles for carrying luggage; motors for cycles; automobile engines; motors for land vehicles; automobile engines; wheel trims; all the aforesaid except tyres, solid rubber tyres, wheels and tubes for tyres.

Class 25: Footwear; headgear; clothing; motorcyclists' clothing of leather; cyclists' clothing; motorcycle gloves; boots for motorcycling; waterproof suits for motorcyclists.

Class 35: Advertising and marketing; wholesaling and retailing in shops and via the internet of motorcycles, bicycles, clothing, footwear, headgear, helmets and accessories for use in motorcycling and cycling, and spare parts and fittings for motorcycles, bicycles and vehicles; all the aforesaid except tyres, solid rubber tyres, wheels and tubes for tyres.

The contested goods are the following:

Class 9: Wearable activity trackers; smartwatches; smartglasses; smartphones; headphones; audiovisual teaching apparatus; 3D spectacles; batteries, electric; battery chargers; cabinets for loudspeakers.

Class 28: Games; apparatus for games; amusement machines, automatic and coin-operated; video game machines; portable games with liquid crystal displays; arcade video game machines; controllers for game consoles; joysticks for video games; protective films adapted for screens for portable games.

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.

Contested goods in Class 9

The contested wearable activity trackers are devices for monitoring and tracking fitness-related metrics. They are similar to the opponent’s sports glasses as they might have the same method of use and might be directed at the same relevant public and share the same distribution channels.

The contested smartglasses; 3D spectacles show some similarities with the opponent’s sports glasses. While the contested ones are used for special purposes and in special circumstances, the fact remains that they share the essential purpose of the opponent’s goods, namely, to help or improve vision, or provide visual experiences, and they often originate from the same undertakings and are available in the same outlets. These goods are, therefore, similar.

The contested batteries, electric; battery chargers are similar to the opponent’s electric vehicles; as they usually coincide in the relevant public and distribution channels. Furthermore they are complementary.

The contested smartwatches; smartphones; headphones; audiovisual teaching apparatus; cabinets for loudspeakers are dissimilar to all the opponent’s goods and services as they have different nature, method of use, they don’t target the same relevant public and neither share the same distribution channels.

Contested goods in Class 28

The contested goods are games; apparatus for games; amusement machines, automatic and coin-operated; video game machines; portable games with liquid crystal displays; arcade video game machines; controllers for game consoles; joysticks for video games; protective films adapted for screens for portable games. These goods have nothing in common with any of the opponent’s goods. In addition to having different natures, methods of use and purposes, the goods target different relevant publics and do not coincide in the distribution channels. It is unlikely that they would originate from the same manufacturers or be complementary to each other. Therefore, the contested goods referred to above are considered dissimilar to all of the goods and services on which the opposition is based.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be similar are directed at the public at large.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication or specialised nature of the goods purchased.

c) The signs

	MACVOR
Earlier trade mark	Contested sign

The relevant territory is European Unión.

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.

In certain languages, such as Spanish, the letters ‘b’ and ‘v’ are pronounced identically. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will pronounce the signs identically such as the Spanish-part of the public. In this language, the elements ‘Macbor’ and ‘MACVOR’, are meaningless, and are therefore distinctive to a normal degree.

The figurative element positioned at the beginning of the earlier mark consisting of a white letter ‘m’ placed on an upside-down black arrow shape background. This element is also distinctive to an average degree for the relevant goods. Nevertheless, it must be noted that 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).

Visually, the signs coincide in the sequence of letters ‘M-A-C-*-O-R’. The contested sign is a word mark and therefore, it is irrelevant whether it is depicted in upper or lower case. The marks differ in their fourth letters ‘-b-/‘-V-’. They also differ in the figurative element containing the letter ‘m’, which will have less impact for the reasons explained above.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sounds of the letters
‘M-A-C-V/B-O-R’, present identically in both signs since the letters ‘v’ and ‘b’ have the same sound. The Opposition Division considers that consumers will not pronounce the letter ‘m’ placed inside the figurative element of the earlier mark.

Therefore, the signs are aurally identical.

Conceptually, the public in the relevant territory will perceive the concept of the letter ‘m’ represented in the figurative element of the earlier sign. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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 goods are partly similar and partly dissimilar. The signs are visually highly similar and aurally identical on account of the verbal elements ‘Macbor’ and ‘MACVOR’. Conceptually, the signs are not similar. However, such difference is not particularly relevant as it lies in an element which forms part of a figurative device in the mark, which has less impact in consumers and will not even be pronounced. The earlier mark is distinctive to an average degree. The public’s degree of attentiveness may vary from average to high.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for the goods found to be 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

Begoña URIARTE VALIENTE

Alexandra APOSTOLAKIS

Martina GALLE

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.