OPPOSITION No B 2 548 116

Unger Holding GmbH, Industriestrasse 22a, 44628 Herne, Germany (opponent), represented by Andrejewski · Honke, An der Reichsbank 8, 45127 Essen, Germany (professional representative)

a g a i n s t

Buck doo, Milorada Jovanovica 9, 11000 Beograd, Serbia (holder), represented by Petosevic B.V.B.A., Avenue Louise 523, 1050 Brussels, Belgium (professional representative).

On 21/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 548 116 is partially upheld, namely for the following contested goods:

Class 11:         Electric lamps; lamps, lighting apparatus and installations; overhead lamps; ceiling lights; LED lighting installations.

2.        International registration No 1 218 386 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 218 386. The opposition is based on European Union trade mark registration No 2 905 909. The opponent invoked Article 8(1)(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 shall 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 shall be rejected.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 2 905 909.

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 relevant date (first republication of the contested international registration plus six months) is 14/04/2015. 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 14/04/2010 to 13/04/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 8:        Hand implements (hand-operated).

Class 9:        Conductor rails for lighting devices, spotlights or lights; transformers, adapters, connectors, control instruments, electric cables, wires, conductors and connection fittings therefor, and accessories for the aforesaid goods, included in class 9.

Class 11:        Lighting devices, light projectors, lights, hanging lights and accessories for the aforesaid goods, included in class 11, in particular filters, reflectors, light shades and colour filters.

According to Rule 22(3) EUTMIR, the evidence of use shall 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 16/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 21/04/2016 to submit evidence of use of the earlier trade mark. On 21/04/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• several catalogues, such as Via-Ringe (dated 07/2011), Muniq (dated December 2011), Gold Silver and Scobo (dated April 2012), Silva (dated July 2012), Via/Via Slide (dated September 2012), Squrve (dated October 2012), Transparency (dated February 2013), Cranny and Duolare (dated June 2013), and Led Duolare (dated October 2013), presenting lighting devices and lighting accessories and other articles and displaying the mark  on the first and last pages;

• a price list for 2014/2015 for lighting devices and lighting accessories and other articles and displaying the mark   on the first page;

• invoices from 2010, addressed to customers in France, Germany and the Netherlands, displaying the mark  the top of each invoice;

• invoices from 2011, addressed to customers in Germany, Spain and the United Kingdom, displaying the mark  at the top of each invoice;

• invoices from 2012, addressed to customers in Greece, Germany and the Netherlands, displaying the mark at the top of each invoice;

• invoices from 2013, addressed to customers in France and the Netherlands, displaying the mark at the top of each invoice;

• invoices from 2014, addressed to customers in Austria and Germany, displaying the mark at the top of each invoice;

• extract from the Commercial Register of Bochum, concerning the company Bruck GmbH & Co. KG (former owner of the earlier mark);

• screenshots of the website www.bruck.de from the Internet Archive Wayback Machine from 2010 to 2014 presenting lighting devices and articles;

• screenshots from www.lightbrands.de/marken/bruck, dated 21/04/2016, presenting lighting devices and articles;

• an article, dated 21/07/2014 and entitled ‘Made in Germany’, in lightMAG, presenting lighting devices and articles under the mark ‘BRUCK’;

• extracts from www.on-light.de and the Nostraforma blog, from 2011, presenting lighting devices and articles under the mark ‘BRUCK’;

• a statutory declaration by Mr Dirk Wortmeyer, dated 20/04/2016 (with an English translation).

As far as the statutory declaration is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The invoices and the product catalogues show that the place of use is the European Union. This can be inferred from the language of the documents (German, English, Dutch), the currency mentioned (euros) and some addresses in France, Germany, Greece, the Netherlands and Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents filed, namely the invoices, the price lists and the product catalogues, 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 shall 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 was used mainly as , but this does not alter the distinctive character of the earlier mark as registered in its verbal form, ‘BRUCK’.

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, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 11:        Lighting devices, light projectors, lights, hanging lights and accessories for the aforesaid goods, included in class 11.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 and services

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

Class 11:        Lighting devices, light projectors, lights, hanging lights and accessories for the aforesaid goods, included in class 11.

The contested goods and services are the following:

Class 11:        Electric lamps; lamps, lighting apparatus and installations; overhead lamps; ceiling lights; LED lighting installations.

Class 42:        Architectural services; architectural consultancy; design of interior decor; industrial design; packaging design services; technical project study; engineering; mechanical research.

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 11

The contested lighting apparatus and installations include, as a broader category, the opponent’s lighting devices, light projectors, lights, hanging lights. 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 electric lamps; lamps, overhead lamps; ceiling lights; LED lighting installations are included in the broad category of the opponent’s lighting devices, lights, hanging lights. Therefore, they are identical.

Contested services in Class 42

The contested architectural services; architectural consultancy; design of interior decor; industrial design; packaging design services; technical project study; engineering; mechanical research are dissimilar to the opponent’s goods. There are numerous differences between goods and services. By their nature, goods are generally dissimilar to services. The opponent’s goods are lighting articles and related accessories. Services, on the other hand, are intangible. Fundamentally, the opponent’s goods have a different purpose from the contested services. Furthermore, the opponent’s goods in Class 11 target mainly consumers interested in buying for domestic use. The contested services target specialist consumers. Although the opponent’s goods could be offered by the same company as the opponent’s services as a part of the installation process, they would not manufactured by the same company that provided the services and the goods and services do not have the same distribution channels. It is not sufficient reason to find them similar, as they are not complementary or in competition.

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.

The degree of attention is average.

3. The signs

BRUCK
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.

The verbal element of the contested mark is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public.

The earlier mark is a word mark, namely ‘BRUCK’, whereas the contested mark is a figurative mark composed of the verbal element ‘BUCK’, in bold magenta upper case letters.

The marks have no meaning for the relevant public and are, therefore, distinctive.

Visually, the signs coincide in the letter sequence ‘B*UCK’, which comprises four of the five letters in the earlier mark and the sole verbal element of the contested mark. However, they differ in the second letter, ‘R’, of the earlier mark, as well as in the typeface and the colour of the contested mark.

Therefore, the signs are visually similar to an average degree

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /B/U/C/K/, present identically in both signs. The pronunciation differs in the sound of the second letter, /R/, of the earlier sign, which has no counterpart in the contested mark.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

The goods are identical and the services are dissimilar. The goods found to be identical target the public at large with an average degree of attention.

The signs are visually and aurally similar to the extent that they coincide in the letter sequence ‘B*UCK’, which comprises four of the five letters in the earlier mark and the sole verbal element of the contested sign. However, they differ in the in second letter, ‘R’, of the earlier mark, as well as in the typeface and the colour of the contested mark.

In this respect, it should be noted that consumers tend to remember similarities rather than dissimilarities between signs. 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).

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 identity between the goods offsets the lesser degree of similarity between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-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. 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 to those of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Cristina CRESPO MOLTO

Francesca DINU

Janja FELC

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.