OPPOSITION No B 2 731 597

Emil Lux GmbH & Co. KG, Emil-Lux-Str. 1, 42929 Wermelskirchen, Germany (opponent), represented by Dompatent Von Kreisler Selting Werner – Partnerschaft von Patentanwälten und Rechtsanwälten mbB, Deichmannhaus am Dom, Bahnhofsvorplatz 1, 50667 Köln, Germany (professional representative)

a g a i n s t

Luxmoore Enterprises Ltd, Vasili Michailidi 9, 3026 Limassol, Cyprus (applicant)

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 731 597 is upheld for all the contested goods, namely

Class 6: Metal hardware; doors, gates, windows and window coverings of metal; structures and transportable buildings of metal; building and construction materials and elements of metal; unprocessed and semi-processed materials of metal, not specified for use; containers, and transportation and packaging articles, of metal; statues and works of art of common metals.

2.        European Union trade mark application No 15 325 764 is rejected for all the contested goods. It may proceed for the remaining services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 325 764, namely against all the goods in Class 6. The opposition is based on, inter alia, European Union trade mark registration No 11 147 361. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 147 361.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 6: Common metals and their alloys; materials of metal for railway tracks; ores; metal building materials; transportable buildings of metal; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; goods of metal, included in class 6; garage doors of metal; tool chests of metal (empty); safes; locks (other than electric) of metal; padlocks; hoppers (non-mechanical) of metal; ladders of metal, stepladders of metal; pegs of metal; wall plugs of metal; fittings of metal for building; fittings of metal for furniture; tensioning and lashing straps; rods of metal for brazing and welding; soldering wire of metal; posts of metal; wire rope; workshop equipment, as far as included in international class 06, including tool holders (aforesaid goods of metal); tool boxes of metal (empty); handles of metal for tools and garden implements; carry straps of metal; oil cans, special-purpose containers, included in class 06 (the aforesaid goods being of metal); posts of metal for attaching marking aids, in particular barrier tapes and warning tapes; gates of metal; locksets; pegs of metal; wall plugs of metal; trellis and espaliers; clips; clips and nails for hand tackers; metal garage door rollers; rollers of metal for sliding doors; none of the aforementioned goods being blinds, shutters, windows, skylights, roof-windows or accessories hereto.

The contested goods are the following:

Class 6 : Metal hardware; doors, gates, windows and window coverings of metal; structures and transportable buildings of metal; building and construction materials and elements of metal; unprocessed and semi-processed materials of metal, not specified for use; containers, and transportation and packaging articles, of metal; statues and works of art of common metals.

The contested metal hardware includes, as a broader category, the opponent’s ironmongery, small items of metal hardware. 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 structures and transportable buildings of metal; building and construction materials and elements of metal are identical to the opponent’s transportable buildings of metal; metal building materials, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested unprocessed and semi-processed materials of metal, not specified for use are included in the broad category of the opponent’s common metals and their alloys. Therefore, they are identical.

The contested doors, gates, windows and window coverings of metal, containers, and transportation and packaging articles, of metal; statues and works of art of common metals; works of art are included in the broad category of the opponent’s goods of metal, included in class 6. Therefore, they are identical.

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 and at business customers with specific professional knowledge or expertise in relation to metal materials, metal hardware and goods made of metal, ranging from packaging articles to statues.

The degree of attention will vary from average (in relation to plain and inexpensive goods such as small items of metal hardware) to high (in relation to expensive and rarely purchased goods, for instance statues and works of art of common metal).

3. The signs

LUX
Earlier trade mark	Contested sign

The relevant territory is 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.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public as the understanding of the signs can affect their distinctiveness as will be explained below.

The word ‘LUX’ present in both signs could allude for part of the relevant public to ‘luxury’ and be associated with ‘the state of great comfort and extravagant living; an inessential, desirable item which is expensive or difficult to obtain’. For another part of the relevant public who has some knowledge of Latin it may convey the concept of light. Further, the public might also see an additional meaning in the sequence of letters ‘LUX’. Indeed, lux is also known as a unit of illuminance and luminous emittance, measuring luminous flux per unit area.  

Taking into account the aforementioned meanings of the word ‘LUX’ and, particularly, the fact that the connection with ‘luxury’ is not obvious with respect to most of the goods in Class 6 since it is not commonplace to determine items of metal in this class as being luxurious or similar, it is considered that the word ‘LUX’ has an average degree of distinctiveness.

The element ‘MOORE’ of the contested sign comprises two intertwined circles, will be read as the word ‘MOORE’ and will be understood as referring to a surname by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods it is distinctive.  

On the other hand, the term ‘STEEL’ of the contested sign will be understood as such, i.e. ‘an alloy based on iron’. Bearing in mind that the relevant goods are ‘metal-related’, this element is non-distinctive. The relevant public will not pay as much attention to this element as to the other more distinctive components of the mark. Consequently, the impact of this non-distinctive word is limited when assessing the likelihood of confusion between the marks at issue.

The contested sign is also composed of a figurative element depicting a cogwheel device. 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 sign has no elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the distinctive element ‘LUX’ which is the only element of the earlier sign and the first verbal element of the contested mark.

However, they differ visually in their stylization, the cogwheel device and visually and aurally in the words ‘MOORE’ and ‘STEEL’ which are below the element ‘LUX’ in the contested sign and have no counterparts in the earlier sign. As the element ‘STEEL’ is non-distinctive for the relevant goods it will have less impact for the relevant public.

Moreover, it is important to note that consumers generally tend to focus on the first element of a sign when being confronted with a trademark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated by the relevant public with a similar meaning through the word ‘LUX’ and are therefore similar to an average degree.

The word ‘STEEL’ in the contested sign has no weight conceptually since it is a non-distinctive term which also appears in the last position. The contested sign will, however, bring to mind a surname and the concept of cogs.

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.

5. Global assessment, other arguments and conclusion

All the contested goods have been found identical to the earlier goods. They are directed both to the public at large and business customers, whose degree of attention will vary from average to higher than average depending on the goods.

It has to been borne in mind 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).

Even though the comparison of the signs has shown both similarities and differences from the visual, aural and conceptual perspectives, the Opposition Division believes that the word element ‘LUX’ in the marks conveys a similar overall impression since this distinctive element constitutes the totality of the earlier mark and the first element of the contested sign.

Taking into account the level of visual, aural and conceptual similarity of the signs, the Opposition Division concludes that the differences in the verbal and figurative elements of the signs are insufficient to override the similarities, and to distinguish the signs from each other, even taking into account a higher degree of attention for some of the goods.

The Opposition Division notes that the concept of 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Moreover, it has to be borne in mind that 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). This is particularly relevant in the present case as the conflicting goods are identical.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 11 147 361. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right EUTM No 11 147 361 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

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

Saida CRABBE

Lucinda CARNEY

Vanessa PAGE

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.