OPPOSITION No B 2 248 899

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

Fábrica de Candeeiros – M.A.F. Castro Unipessoal LDA. (Double. Use 496409), Rua Presa Da Cavada 262, 4510-640 Fanzeres Fânzeres, Portugal (holder), represented by J. Pereira Da Cruz S.A., Rua Victor Cordon 14, 1249-103 Lisboa, Portugal (professional representative).

On 06/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 248 899 is upheld for all the contested goods.

2.        International registration No 1 163 464 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 1 163 464. The opposition is based on European Union trade mark registration 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 and services

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

Class 11:        Apparatus for lighting, Flashlights [torches], Hand lamps, Bulbs, Lamps.

Class 35:        Retailing, mail order retailing and retailing via telecommunication means of the following goods: lamps, torches, cells and light bulbs.

The contested goods are the following:

Class 11:        Lamp shades; ceiling lights; street lamps; chandeliers; lamp glasses; lighting apparatus and installations.

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 5

Lighting apparatus are identically contained in both lists of goods (including synonyms).

The contested lighting installations overlap with the opponent’s apparatus for lighting. 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 ceiling lights; street lamps; chandeliers are included in the broad category of the opponent’s apparatus for lighting. Therefore, they are identical.

The contested lamp shades; lamp glasses are, as the description itself indicates, all goods used together with lamps, and as such they are similar to the opponent’s lamps since they are designed to be used in connection with lamps, they have the same distribution channels, they often have the same commercial origin and they have the same end users.

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 partly directed at the public at large (e.g. lamp shades) and partly directed at professional consumers (e.g. street lamps) with specific professional knowledge or expertise.

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

Taking into consideration that some of the goods (e.g. street lamps) are not bought frequently and that they are also quite expensive the degree of attention is considered to vary from average to high.

3. The signs

	CASTRO LAMPS
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 earlier mark and the contested sign have different meanings in certain territories, for example, in Roman speaking countries. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-Roman speaking countries since the public will only associate the contested sign with a meaning.

The earlier mark is a figurative mark with the verbal element ‘casto’. The verbal element is written in white standard characters on a blue rectangular shape figure with a slightly inward curved bottom. The verbal element is underlined with a line that shifts in white and blue colour. The line follows the curved bottom of the rectangular. There is also, what looks like a grave (in yellow), in the end of the verbal element cutting in to the last letter ‘o’. The figurative elements are fairly standard decorative elements used in trade and therefore weak. The verbal element has no meaning in relation to the relevant goods and is therefore distinctive.

The contested sign is a word mark consisting of the verbal elements ‘CASTRO’ and ‘LAMPS’. Although the first verbal element of the contested sign has no meaning in relation to the relevant goods and is therefore distinctive, the relevant public will perceive it as a surname considering the famous Cuban revolutionary and politician, Fidel Castro. The second verbal element ‘LAMPS’ will be understood in its English meaning, as a device for giving light, considering its similarities to the relevant publics own languages for this word. Bearing in mind the relevant goods this verbal element is non-distinctive.

Visually, the signs coincide in the letters ‘C-A-S-T-(*)-O’ which constitutes all letters of the earlier mark. They differ in that the contested sign also have the letter ‘R’ between the fourth and fifth letter and a second verbal element, ‘LAMPS’. The earlier mark also has some weak figurative elements. However, considering their limited impact and the fact that the word ‘LAMPS’ is descriptive of the goods, the one letter difference between the distinctive words ‘CASTO’ and ‘CASTRO’ is of minor importance in the overall impression of the signs, especially considering its occurrence towards the end, that is in fourth position, of the contested sign.

Therefore, the signs are visually highly similar.

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 ‛C-A-S-T-O’, present identically in both signs. The pronunciation differs slightly in the sound of the letter ‛R’ of the contested sign located between the fourth and fifth letter, which has no counterpart in the earlier mark. Also the marks differ in the sound of the second verbal element of the contested sign however, as stated above, this element is non-distinctive and therefore is of very little impact.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the verbal elements of the contested sign, as explained above, the other mark 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.

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. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital of art. 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested goods are partly identical and partly similar. The goods are partly directed at the public at large and partly at professionals with a level of attention that vary from average to high. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. Additionally the marks in dispute have been found visually and aurally similar to a high degree and conceptually not similar.

Taking the above into consideration, although the signs differ in some elements, they coincide in the almost identical distinctive element of both marks. Taking into account the consumer’s imperfect recollection, the importance of the beginning of the signs and the non-distinctiveness of the second verbal element, ‘LAMPS’, of the contested sign, the difference between the signs resulting from the addition of the letter ‘R’ between the fourth and fifth letter of the first verbal element of contested sign, is not sufficient to outweigh the similarities between the signs. Indeed considering that consumers only occasionally have the opportunity to compare marks next to each other and that the goods are identical, even more attentive consumers may easily conclude that the goods labelled with the contested sign come from the same undertaking or economically linked undertakings as those labelled with the earlier mark considering the high similarities between the marks.

Considering all the above, there is a likelihood of confusion on the part of the non-Roman 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 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/reputation 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

Adriana VAN ROODEN

Benjamin Erik WINSNER

Begoña URIARTE VALIENTE

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.