OPPOSITION No B 2 777 293

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

Lux Ortiz BVBA, Kipdorpvest 36, 2000 Antwerpen Belgium (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, The Netherlands (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 777 293 is upheld for all the contested goods, namely:

Class 25: Clothing, footwear, headgear; Tee-shirts; Socks; Sneakers; Insoles; Caps [headwear]; Scarves and neckties; Belts and straps.

2.        European Union trade mark application No 15 368 756 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 of European Union trade mark application No 15 368 756, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 11 147 345 ‘LUX LUX TOOLS’ (figurative mark) and European Union trade mark registration No 11 147 361 ‘LUX’ (word mark). 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 11 147 345.

1. The goods

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Clothing, footwear, headgear; Tee-shirts; Socks; Sneakers; Insoles; Caps [headwear]; Scarves and neckties; Belts and straps.

The contested clothing, footwear, headgear are identically contained in both lists.

The contested tee-shirts; socks; scarves and neckties; belts and straps are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested sneakers are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested caps [headwear] are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested insoles are similar to the opponent’s footwear, as they have the same distribution channels, public and producers. Furthermore, they are complementary to each other, as insoles are necessary for shoes.

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. The degree of attention is considered average.

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). 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 word element ‘LUX’, which appears in both signs, could allude, for part of the public, to the word ‘luxury’ and might be considered a weak element. However, this word element, which the signs have in common, will not be associated with such a meaning in certain territories, for example in those countries where the word ‘luxury’ is translated as, for instance, ‘πολυτέλεια’ (the transliteration in the Latin alphabet is ‘polyteleia’) in Greek, ‘lusso’ in Italian or ‘prabanga’ in Lithuanian. Therefore, the abbreviation ‘LUX’ will not allude to the word ‘luxury’ in these countries. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Greek-, Italian- and Lithuanian-speaking parts of the relevant public.

The earlier sign is composed of a figurative element depicting a white circle on a blue rectangular background with the word ‘TOOLS’ in white letters at the bottom of the rectangle. The circle contains the word ‘LUX’ depicted vertically and horizontally in white letters forming a cross; the depiction resembles a crossword puzzle, with the letter ‘U’ as the central and common letter. The verbal element ‘TOOLS’ is less dominant (visually eye-catching) due to its size and position in the mark. The word element ‘LUX’ of the earlier mark, by virtue of its central position and size, overshadows the remaining elements of the mark. It is the visually dominant element of the earlier mark.

The contested sign is a figurative mark, which consists of the verbal element ‘LUX’, which is depicted in red letters diagonally across a black square background, and red horizontal lines, which are in the bottom left corner and the top right corner of the sign. The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The element that the signs have in common, namely ‘LUX’, will be understood by a part of the Greek-, Italian- and Lithuanian-speaking public as the Latin word for light, which is used to designate ‘a unit of illuminance and luminous emittance, measuring luminous flux per unit area’. Taking into account the abovementioned meaning of the word ‘LUX’ and, particularly, the fact that there is no connection with ‘a unit of illuminance and luminous emittance, measuring luminous flux per unit area’ with respect to the goods in Class 25, it is considered that the word ‘LUX’ has an average degree of distinctiveness.

Furthermore, at least for a part of the Greek-, Italian- and Lithuanian-speaking public, the word ‘LUX’ is meaningless and therefore also distinctive.

The word element ‘TOOLS’ in the earlier mark has no meaning for the relevant public and is, therefore, distinctive; however, as explained above, it will have less impact on the consumer than the element ‘LUX’.

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).

Visually, the signs are similar to the extent that they both contain the distinctive and independent verbal element ‘LUX’. They differ in the way in which this element is depicted (appearing twice in white letters in the form of a crossword in the earlier mark and appearing once, diagonally, in red letters in the contested sign). They also differ in their figurative elements and in the verbal element ‘TOOLS’ of the earlier mark.

As previously mentioned, the figurative elements have less impact on consumers than the verbal elements. Furthermore, the coinciding verbal element is the dominant element in the earlier mark.

The word ‘LUX’ constitutes the entire contested mark and the first element of the earlier sign.

The relevant public generally tends to focus on the first part of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the fact that the contested mark is totally incorporated in the earlier sign at its beginning has to be taken into account when assessing the likelihood of confusion between the marks.

Therefore, the marks are visually similar to an average degree.

Aurally, the earlier mark will most likely be pronounced as ‘LUX’ and not ‘LUX LUX’. Consequently, the pronunciation of the marks coincides in the sound of the letters ‘LUX’, present identically in both signs.

The pronunciation differs in the sound of the word element ‘TOOLS’ of the earlier mark.

Considering that the earlier mark is aurally fully included in the contested sign as its first element, it is concluded that the marks are aurally similar to a higher than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. However, for a part of the Greek-, Italian- and Lithuanian-speaking public, the word ‘LUX’ will be associated with light, a concept that is not related to the goods at issue; for this part of the relevant public, the marks are conceptually highly similar.

For the remaining part of the relevant public, which will not understand the word ‘LUX’, neither of the signs has a meaning. Since a conceptual comparison for this part of the public 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 question. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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 the marks may be offset by a greater degree of similarity between the goods and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods are identical or similar.

The relevant public is the public at large, the degree of attention is considered average and the earlier mark has a normal degree of distinctiveness.

The relevant goods are clothing, footwear, headgear; tee-shirts; socks; sneakers; insoles; caps [headwear]; scarves and neckties; belts and straps in Class 25. Generally, in clothes shops, customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50).

In addition, according to the principle of imperfect recollection, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. Consumers will also be more likely to remember the similarities than the dissimilarities between the signs, especially taking into account that, in the present case, the similarities are at the beginnings of the marks, where they will catch the primary attention of the consumer.

In the present case, the contested goods are identical or similar. The comparison of the signs has shown an average degree of similarity from the visual and aural perspectives and a high degree of conceptual similarity for a part of the public.

These degrees of aural, visual and conceptual similarity for a part of the public, combined with the consumers’ imperfect recollection and considering the interdependence principle for the goods that are identical or similar, result in a likelihood of confusion between the signs. It cannot be excluded for sure that the relevant consumer will confuse the marks or alternatively perceive the contested mark as a sub-brand or variation of the earlier mark (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the Greek-, Italian- and Lithuanian-speaking parts 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.

As the earlier right European Union trade mark registration No 11 147 345 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

Steve HAUSER

Alexandra APOSTOLAKIS

Catherine MEDINA

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.