OPPOSITION No B 2 557 828
Emag AG, Gerauer Str. 34, 64546 Mörfelden-Walldorf, Germany (opponent), represented by Glück Kritzenberger Patentanwälte PartGmbB, Hermann-Köhl-Str. 2a, 93049 Regensburg, Germany (professional representative)
a g a i n s t
Max Italia s.r.l., Via Collegio di Spagna 21, 40123 Bologna, Italy (applicant), represented by Monica Bettini, Via Collegio di Spagna 21, 40123 Bologna, Italy (professional representative).
On 20/06/2017, the Opposition Division takes the following
1. Opposition No B 2 557 828 is upheld for all the contested goods.
2. European Union trade mark application No 14 092 852 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 092 852. The opposition is based on European Union trade mark registration No 5 570 941. The opponent invoked Article 8(1)(a) and (b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication 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, the word mark ‘Emmi’.
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
The contested application was published on 28/05/2015. 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 28/05/2010 to 27/05/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 11: Lighting devices, lamps, including UV lamps; fluorescent tubes.
According to Rule 22(3) EUTMIR, 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 and services in respect of which it is registered and on which the opposition is based.
On 15/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 15/05/2016, deadline subsequently extended until 15/07/2016, to submit evidence of use of the earlier trade mark. On 15/07/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is, in particular, the following:
- 39 invoices issued between 15/08/2011 and 27/11/2015 issued to customers with addresses in The Netherlands, Finland, Germany, France, Austria, Latvia, Bulgaria, Spain and Italy. The Invoices make reference to items with reference numbers 95507, 95514, 95515, 95501 that correspond to the detail of the products displayed in the catalogues. Reference No 95507 corresponds to ‘UV-Ersatzröhre 9S’ for fluorescent tubes, reference No 95514 corresponds to ‘Emmi-Light 20’ for lighting devices, reference No 95515 to ‘Ersatzröhre für Emmi-Light 20’ for fluorescent tubes and reference No 95501 corresponds to Emmi-Profi weiß for ‘UV-Lichtärtungsgerät’. The invoices are in German and show the number of unit sold, the price per unit and the total price. The amounts and quantities sold all over the relevant period are significant
- 7 catalogues with the description of the products sold under the brand. Although the catalogues are in German, in its writing of 15/07/2016 provided together with the proof of use the opponent has provided a translation of the products corresponding to the reference numbers 95507, 95514, 95515, as indicated in the previous paragraph. As for item with reference 95501, the German description is relatively close to the English UV Lights and can therefore be understood as such. Only one of the catalogues is dated 2012.
- Pictures corresponding to the packaging of lighting devices and fluorescent tubes showing the signs and .
The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.
The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
The above mentioned evidence show that the place of use is the European Union as it can be inferred from the language of the documents that are in German, the currency mentioned (EURO) and the addresses that are mainly in Germany but also in The Netherlands, Finland, France, Austria, Latvia, Bulgaria, Spain and Italy. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
The documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the earlier mark has been used in combination with the words ‘nail’ and ‘light’ which are descriptive terms that will be understood by the professionals that use the goods at hand since they are light devices for manicure apparatuses. As regards the words ‘Das Original’, their impact on consumers will be low because of their size and position within the signs. Moreover, since the word ‘ORIGINAL’ is frequently used in marketing to show that the product is the first of its kind and thus convey a perception of quality, it is devoid of distinctive character. Consequently, the Opposition Division considers that the use of the verbal element ‘Emmi’ has not been altered by none of the additional elements just described.
In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.
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).
Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory, for all the goods.
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.
- The goods
The goods on which the opposition is based are the following:
Class 11: Lighting devices, lamps, including UV lamps; fluorescent tubes.
The contested goods are the following:
Class 11: LED light bulbs; LED luminaires; LED underwater lights.
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 list 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
The contested LED light bulbs; LED luminaires; LED underwater lights are all included in the broad category of the opponent’s lighting devices. Therefore, they are identical.
- 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 and at business customers with specific professional knowledge or expertise.
The degree of attention may vary from average to above average, depending on the specialised nature of the goods, the frequency of purchase and their price.
- The signs
Earlier trade mark
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 sign is a figurative mark consisting of the graphic representation of a light bulb in black and white followed by the verbal elements ‘3 Emme light’ written in black standard case letters.
The word ‘LIGHT’ in the contested sign will be understood by the English speaking part of the public as ‘the brightness that lets you see things. Light comes from sources such as the sun, moon, lamps, and fire’. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this particular part of the public.
Taking into consideration the nature of the goods at hand, the word ‘LIGHT’ and the drawing of the light bulb in the contested sign are weak or even non-distinctive. The word ‘EMME’ has no meaning whatsoever and, together with the number ‘3’ that will be perceived as such, they are the most distinctive elements.
The contested sign has no elements that could be considered clearly more dominant than other elements.
The earlier mark is a work mark consisting of the verbal element ‘Emmi’ that has no meaning for the relevant public and which distinctive character is therefore average. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the earlier mark is represented in upper or lower characters or a combination of those.
Visually, the signs coincide in the letters ‘EMM’ but differ in the last letter of this distinctive verbal element namely, the letter ‘E’ in the contested sign and the letter ‘I’ in the earlier mark. They also differ in additional following elements of the contested sign, namely, the number ‘3’, the drawing of the light bulb and the word ‘LIGHT’; the last two elements being devoid of distinctive character or weak. The verbal elements ‘EMME’ and ‘EMMI’ also follow the same structure as they are words that consist of four letters and both have the letter ‘M’ as double consonant.
Therefore, the signs are visually similar to an average degree.
Aurally, part of the relevant public will pronounce the word ‘EMME’ in the contested sign as ‘ɛm’ and part as ‘ɛmmɛ’. The earlier mark will be pronounced as ‘ɛmmi’. Consequently, for a part of the public, the pronunciation of the signs coincides in the sound of the letters ‘EMM’, which almost constitute the earlier mark in its entirety and are part of one of the most distinctive elements of the contested sign. The pronunciation of the signs differ in the sound of the word ‘LIGHT’ in the contested sign, which has in any case no distinctive character, in the number ‘3’ that have no counterpart in the earlier mark and in the sound of the final letter ‘I’ against ‘E’ when the later is pronounced.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the public in the relevant territory will perceive the meanings of some elements of the contested sign, as explained above, the earlier 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.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).
According to the same line of case-law, 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). Moreover, 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, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.
In the present case, the goods are identical and the signs are visually and aurally similar to an average degree. This is because for the part of the relevant public, the representation of the light bulb and the word ‘LIGHT’ in the contested sign are weak or descriptive of the goods in question and will not cause such of an impact on consumers that will, instead, focus their attention on the elements with most distinctiveness, namely, the number ‘3’ and ‘EMME’. The coincidence in the sequence of the letters ‘EMM’ is all the more flagrant since words using the letter ‘M’ as double consonant are not so frequent in English.
Although some differences remain, there is still a likelihood of confusion because they are not sufficient to counteract the overall overwhelming similarities.
Account is also taken of the fact 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).
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.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public, even when the degree of attention is above than average. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 570 941. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.