OPPOSITION No B 2 804 899

Oakmoore Pty Limited, 84 Evans Road, Salisbury, Queensland 4107, Australia (opponent), represented by Venner Shipley LLP, 200 Aldersgate, London  EC1A 4HD United Kingdom (professional representative)

a g a i n s t

Shenzhen Baishengde Technology Co. Ltd., 905 (Work place), Building 11, Longtang New Village, Minzhi Street, Longhua New Dist, Shenzhen,  People's Republic of China, (applicant), represented by Isabelle Bertaux, 2 rue Saint Florentin, 75001 Paris, France (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 804 899 is upheld for all the contested goods.

2.        European Union trade mark application No 15 621 014 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 621 014 for the figurative mark. The opposition is based on International registration designating the European Union No 1 134 545 for the word mark ‘EGR’. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remarks

In the letter of 04/04/2017, the opponent stated that for reasons of procedural economy, it decided not to pursue the ground of opposition under Article 8(5) EUTMR in the present opposition proceedings.

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:        Lighting, heating, air conditioning and ventilating apparatus for vehicles; prefabricated toilets and washroom structures including portable washrooms and toilets and their parts and accessories; shower panels.

Class 12:        Land, air and sea vehicle parts and accessories; vehicle canopies, vehicle bonnet protectors, vehicle weather shields, vehicle headlight protectors, vehicle hard lids, vehicle nudge bars, vehicle bull bars, vehicle tonneau covers, vehicle sports bars, vehicle roof rack kits, vehicle fender flares, vehicle body kits, vehicle spoilers.

The contested goods are the following:

Class 11:        Lamps; Searchlights; Safety lamps; Chinese lanterns; Lighting apparatus and installations; Light-emitting diodes [LED] lighting apparatus; Fluorescent lighting tubes; Fluorescent lamp tubes; Incandescent burners; Ceiling lights; light bulbs; Arc lamps [lighting fixtures].

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 in Class 11, 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 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 broad categories the opponent’s Lighting apparatus for vehicles. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested Light-emitting diodes [LED] lighting apparatus overlap with the opponent’s Lighting apparatus for vehicles because they are lighting devices and may be used for vehicles. Therefore, these goods are identical. 

The contested Lamps; Searchlights; Safety lamps; Chinese lanterns; Fluorescent lighting tubes; Fluorescent lamp tubes; Incandescent burners; Ceiling lights; light bulbs; Arc lamps [lighting fixtures] are similar to the opponent’s Lighting apparatus for vehicles. All the above-mentioned goods are lighting apparatus whose main purpose is producing light although in the case of the opponent’s goods with a specific aim such as signalling, for example. Notwithstanding various aims of the goods in question, all of them have the same nature and purpose and it is likely that they are produced by the same manufacturer. Therefore, they are considered similar.

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 the public at large and at the professionals.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

EGR
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 earlier mark is a word mark composed of three letters: ‘EGR’. In word marks, it is the word as such that is protected; therefore, it is irrelevant if the sign is depicted in lower or upper case letters, or in combination thereof.  

The contested sign is a figurative mark composed of the verbal element ‘egrd’, written in rather standard lowercase letters in black.

Both signs do not have any clear meaning for the relevant public in the relevant territory and, therefore, their distinctiveness per se in relation to the relevant goods is normal.

Visually and aurally, the signs coincide in in the string of letters/sounds forming the earlier mark ‘EGR’ and they differ in the additional letter ‘d’, positioned at the end of this string in the contested sign. As to the figurative elements of the contested sign, their impact is clearly of a limited nature. As mentioned above, the script in which the string of letters ‘egrd’ is presented is rather standard. Furthermore, 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; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, in the present case the relevant public will focus the attention on the verbal element ‘egrd’ of the contested sign.

It is true that in the signs that are short or relatively short (the contested sign), which is the case under the present dispute, the visual differences between the letters placed at central or final positions may be as important in the comparison as those placed at the beginning of the signs. Nonetheless, in the case at issue, the mere difference in the additional letter ‘d’, placed at the end of the contested sign is insufficient to avoid there being a visual similarity between the signs in question.

As to the aural comparison, in the opinion of the Opposition Division the vast majority of the relevant consumers will pronounce the signs letter by letter. Although, in respect of short signs or rather short signs, as in the case of the contested sign, case law states that, in some specific circumstances of the cases, small differences may lead to a different overall phonetic impression (15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 52), in the case at hand, the mere addition of the letter ‘d’ at the end of the shared string of letters ‘egr’ is clearly insufficient to overcome the general impression of aural similarity between the signs.

Therefore, taking into account all the above and the coincidence in the normally distinctive element ‘egr’, the marks are visually and aurally similar to a high 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 of the comparison, the examination of the 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 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 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).

The goods at issue are identical and similar.

The distinctiveness per se of the earlier mark is normal.

The earlier mark and the contested sign are visually and aurally similar to a high degree and the signs have no clear concepts that would help a consumer to distinguish them.

The signs in dispute coincide in the string of letters forming the earlier mark in its entirety – ‘EGR’. The differences are limited to the last letter added at the end of the contested sign. As mentioned above, the stylisation of the contested sign is not striking and not uncommon and, therefore, it will not help consumers to keep it in mind or will contribute in distinguishing between the signs.

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). This principle applies to the case at hand because the conflicting goods are identical and similar.

In addition, 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). 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)

The Opposition Division considers that the visual and aural similarities between the signs are sufficient to lead to a likelihood of confusion between the marks in the relevant territory for identical and similar goods, even considering that the degree of attention of the relevant consumers in relation to the goods at issue may be higher than average.

Therefore, the opposition is well founded on the basis of the opponent’s International Registration designating the European Union No 1 134 545. It follows that the contested trade mark must be rejected for all the contested goods.

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

Marzena MACIAK	Monika CISZEWSKA	Pedro JURADO  MONTEJANO

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.