OPPOSITION No B 2 389 818

Kingfisher France, Z.I. Templemars, 59175 Templemars, France (opponent), represented by Cabinet Plasseraud, 66, rue de la Chaussée d'Antin, 75440 Paris Cedex 09, France (professional representative)

a g a i n s t

Fabrica Candeeiros M.A.F. Castro Unip. Lda, Rua Presa Da Cavada, Nº 262, 4510-640 Gondomar, Portugal (holder), represented by J. Pereira Da Cruz S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

On 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 389 818 is upheld for all the contested goods.

2.        International registration No 1 179 464 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 179 464. The opposition is based on European Union trade mark No 10 435 428. The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The goods

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

Class 11: Apparatus for lighting, lamps, lighting appliances.

The contested goods are the following:

Class 11: Ceiling lamps; suspensions of lamps.

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 goods in Class 11, namely ceiling lamps, fall in the broad category of lamps of the opponent. These goods are therefore identical.

The contested suspensions of lamps are similar to the opponent´s lamps. These goods are complementary, coincide in distribution channels and points of sale and are directed at the same consumers. In addition, they are likely to come from the same kind of companies.

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar are directed at both, the public at large and at professional consumers with specific professional knowledge or expertise.

The public´s degree of attentiveness during the purchase of the goods involved is likely to vary from average to higher than average. A higher than average degree of attention would be in this case justified by the fact that ceiling lamps can sometimes be of high prices and a particular knowledge is often required for installing them after their purchase.

For the purpose of procedural economy, given that the general public paying an average degree of attention is more prone to confusion, the examination will proceed on this basis.

3. The signs

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In this regard, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, who will perceive all of the words included in both signs as meaningless.

The earlier mark is formed by the word “casto”/”castó” (depending if the yellow line accompanying letter “o” is perceived or not as an accent), in white bold letters with a blue background, and underlined by a curved line.

The contested mark is formed by the word “CASTRO”, in black big letters, and the word “LIGHTING” in light grey letters of smaller size positioned below it. It also contains a stylised orange letter “C”, with one of its endings longer, interlaced with some letters of the word “CASTRO”.

The word “casto”/ “castó” has no concept for the English-speaking part of the public.

The word “CASTRO” is perceived by the vast majority of English-speakers as having no concept. However, it cannot be totally disregarded that part of the public could perceive it as a surname. The stylised letter “C” has the concept of the letter it represents. The word “lighting” is used in English to refer to, inter alia, the apparatus for supplying artificial light effects to a stage, film, or television set (Collins English Dictionary).

Regarding the existence of dominant (visually eye-catching) elements in the signs, the earlier mark has no element more dominant than others, and the contested sign is formed by the co-dominant elements “C” and “CASTRO”, and by the word “LIGHTING”, which is of less visual impact due to its colour (light grey), smaller font size and position.

The earlier mark is formed by the distinctive term “casto”/“castó” and by a curved line underlining it, which is void of distinctive character for being a commonplace element with a purely decorative function. The blue background where the word is contained acts as a frame, and is void of distinctive character, not being capable to help consumers to identify the commercial origin of the goods. Therefore, the verbal element is the most distinctive element of the mark.

The element “CASTRO” in the contested mark is of average distinctive character, and the word “LIGHTING” is non-distinctive for being a clear reference to the characteristics of the goods involved, namely their kind and nature. The stylised letter “C” is perceived as a reference to the first letter of the word accompanying it, and fulfils a merely decorative function, and not as an element indicating the commercial origin of the goods. Therefore, “CASTRO” is the most distinctive element in the sign.

Both marks compared contain verbal and figurative elements. 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).

For the reasons explained above, in our case the verbal elements of the marks, where the coincidences between the marks are found (see comparison below), have a stronger visual impact on the consumer than the figurative components accompanying them.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. 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.

In this case, the coincidences are found at the beginning of the verbal elements in the marks (see comparison below) and therefore in the parts that first catch the attention of consumers.

Visually, the signs coincide in the sequence of letters “c-a-s-t” of the words “casto”/”castó” and “CASTRO”, and in the ending “o” of those terms.

The signs differ in the rest of elements forming them, described above, and in the letter “R” of “CASTRO”. The differing letter “R” in the contested sign is preceded and followed by the coinciding letters referred to above. Its visual impact is therefore reduced due to its position within the term, and could be even overlooked.

The signs differ in colour, typeface and in the other verbal and figurative elements to which reference has been made above. Regarding the impact of those differing elements, this is limited due to the fact that they are either non-distinctive or of lower than average distinctive character.

According to the above, the signs are visually similar to an average degree.

Aurally, the signs coincide in the sound of the sequence of letters “c-a-s-t” and the ending “o” in the words “casto”/”castó” and “CASTRO” in the marks.

The signs differ in the sound of “LIGHTING” in the contested mark, considered to be non-distinctive and visually non-dominant element, as explained above. In this regard it must be noted that consumers frequently omit the pronunciation of non-distinctive elements when referring to the marks aurally, since those elements are not capable of helping consumers to identify the commercial origin of the goods or services in relation to which they lack distinctiveness.

Even if it cannot be totally disregarded that the stylised “C” of the contested sign is pronounced, it is likely that consumers perceive it only as a reference to the first letter of “CASTRO”, having only a decorative function, and omitting it when referring to the mark aurally.

The differing “R” in the word “CASTRO” of the contested sign does not constitute a strong differing sound, and it is preceded and followed by the coinciding sounds referred to before, which help to dilute the aural difference.

Taking into account all of the above, it is considered that the marks are aurally highly similar.

Conceptually, English-speaking consumers attribute a concept to the contested sign, in which “LIGHTING” and ‘C’ are understood as having the meanings referred to above (also ‘CASTRO’ for a minor part). Since the earlier mark has no 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 on which the present comparison is limited. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some merely decorative elements, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly similar. The signs are visually similar to an average degree, aurally highly similar and not conceptually similar.

For the English-speaking part of the general public, i.e. the part that is more prone to be confused, on which the comparison has been focussed, the coincidences between the marks rely on their most distinctive elements, in which the differences are reduced to one additional letter of the contested sign.

The impact of the differing elements referred to before on likelihood of confusion is reduced in the present case for the different reasons described in detail in the previous sections (e.g. their less visual impact and/or their lower than average distinctive character or their lack of distinctive character).

The average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, and according to the principle of imperfect recollection, 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.

Based on the principle of imperfect recollection, the consumers might believe that the conflicting goods come from the same or economically-linked undertakings.

For the sake of completeness, even if the a higher than average degree of attention was paid by part of the general public (e.g. due to a high price of the goods), the coincidences between the marks are in this case, together with the identity or similarity of the goods, are enough to counteract the dissimilarities, leading also the part of the public paying a higher than average degree of attention to confusion when trying to identify the commercial origin of the goods.

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. Likewise, as to the focus on the general public, given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public, namely the professionals.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark No 10 435 428. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 holder 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

Martin MITURA

María del Carmen SUCH SANCHEZ

Richard BIANCHI

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.