OPPOSITION No B 3 017 830

Fr. Jacob Söhne GmbH & Co. KG, Niedernfeldweg 14, 32457, Porta Westfalica, Germany (opponent), represented by Loschelder, Konrad-Adenauer-Ufer 11, 50668, Köln, Germany (professional representative)

a g a i n s t

Lightway s.r.o., Ledvinova 1714/12 14900 Praha 4 Czech Republic (applicant), represented by Jitka Vejražková Podkovářská 6 190 00 Praha 9 Czech Republic (professional representative).

On 19/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 017 830 is partially upheld, namely for the following contested goods and services:

Class 19: Building materials (non-metallic) and construction elements, not of metal; wall claddings, not of metal, for building; linings; paving stones.

Class 36: Development in the field of real estate (purchase, leasing and sale of real estate and land); real estate administration; investment in the field of real estate.

2. European Union trade mark application No 16 972 424 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 972 424 for the word mark ‘JACOBB’, namely against all the goods in Class 19 and some of the services in Class 36. The opposition is based on the European Union trade mark registration No 14 203 087 for the word mark ‘JACOB’. 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.

PRELIMINARY REMARK

In the opposition notice filed on 03/01/2018 the opponent directed the opposition against all the goods in Class 19 and some services in Class 36. In its observations received on 15/05/2018, that is after the end of the opposition period, it also refers to the goods in Class 20 of the contested application that had not been previously identified within the opposition period.

Effectively from these observations it is surmised that the opponent is attempting to broaden the scope of its opposition. The Opposition Division cannot accept this extension of the scope of opposition as valid. This is due to the fact that within the three-month opposition period the opponent clearly indicated and listed the goods against which it wished to direct its opposition. The Opposition Division is not entitled to allow a subsequent broadening of the scope of the opposition (see, by analogy, 21/12/2009, R 1517/2007-4, § 20).

a) The goods and services

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

Class 6: Pipes, control pipes and cleaning pipes, control spigots, fork pieces and tee-connectors, clamping rings, adapters, connector supports, cones, valves for air regulation, pipe throttle and shut-off valves with and without gaskets, bag spouts, pipe slide valves, ball joints for connecting pipes, pipe, cover and metering valve boxes, two-way distributors, outlet slides, rotary pipe distributors, dust-tight rotary pipe distributors, rotary pipe switches; all the aforesaid goods wholly or mainly of metal.

Class 17: Flange gaskets, annular gaskets, border sealing rings, weather-strippings, butterfly valve seals, clack valves, sleevings, round cords, profile cords, outlet seals; all the aforesaid goods wholly or predominately of plastic or rubber, not included in other classes.

Class 37: Building construction; repair and installation of pipes, control pipes and cleaning pipes, control spigots, fork pieces and T-pieces, clamping rings, adapters, connection branches, cones, valves for air regulation, pipe throttle and shut-off valves with and without gaskets, bag spouts, pipe slide valves, ball joints for connecting pipes, pipe, cover and metering valve boxes, two-way distributors, outlet slides, rotary pipe distributors, dust-tight rotary pipe distributors, rotary pipe switches, flange gaskets, annular gaskets, border sealing rings, seals, valve gaskets, covers, collars, round cords, profile cords, outlet seals.

The contested goods and services are the following:

Class 19: Building materials (non-metallic) and construction elements, not of metal; wall claddings, not of metal, for building; non-metal doors; windows (non-metallic- ); non metallic gates; jalousies; linings; paving stones.

Class 36: Development in the field of real estate (purchase, leasing and sale of real estate and land); real estate administration; investment in the field of real estate.

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 19

The contested building materials (non-metallic) and construction elements, not of metal cover various non-metallic pipes, such as ceramic, concrete or plastic pipes. Therefore, they are similar to a high degree to the opponent’s pipes in Class 6. These goods have the same natures and purposes. They are distributed via the same channels and they target the same part of the public. They also usually come from the same or economically linked undertakings.

The contested wall claddings, not of metal, for building; linings; paving stones are similar to at least a low degree to the opponent’s pipes in Class 6. These goods have the same distribution channels, they target the same public and can be produced by the same or economically linked undertakings.

The contested non-metal doors; windows (non-metallic-); non metallic gates; jalousies are dissimilar to all the opponent’s goods and services. These goods and the opponent’s goods and services have different natures and purposes. They are neither complementary nor in competition. They target different public through different distribution channels. Even if all these goods and services can be used in construction sector, they are not expected to be offered by the same or economically linked undertakings.

Contested services in Class 36

The contested development in the field of real estate (purchase, leasing and sale of real estate and land); real estate administration; investment in the field of real estate in Class 36 cover a range of operations which relate to real estate and consist of the sale, purchase, lease and management of real estate as well as intermediary services in any of these real estate activities. Although the nature and purpose of these services are different from the opponent’s building construction in Class 37, they are similar inasmuch as their objective is to effect operations of monetary value in relation to real estate (decision of 10/01/2012, R 518/2011-2 and R 795/2011-2, ‘COMSA / COMSA, S.A.’, paragraph 39 confirmed by judgment of 09/04/2014, T-144/12, § 47). Consequently, the services are complementary, since real estate affairs cannot be provided without the provision of services of property construction. Moreover, said services can have the same origin inasmuch as construction companies can be (and, in fact, frequently are) owners of the buildings that they construct, in which case they would also promote the sale of the building. These services are therefore similar.

b) 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 and services found to be similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

With regard to the services in Class 36 it needs to be noted that the purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a higher-than-average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (17/02/2011, R 817/2010‑2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

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

c) The signs

JACOB	JACOBB
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 public in the relevant territory will perceive the word ‘JACOB’ as a first name or a surname, as this is the English variant of a popular European male given name of a Hebrew origin.

The element ‘JACOBB’ of the contested sign can be also associated with the name ‘Jacob’ or its equivalents in other European languages as it can be perceived as a misspelling of this name. As these elements have no meaning in relation to the relevant goods and services, they are distinctive.

Visually, the signs coincide in the string of letters ‘JACOB’. However, they differ in the additional repeated letter ‘B’ at the end 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 signs will be pronounced identically or almost identically as the additional letter ‘B’ of the contested sign will have little, if any, impact on the pronunciation of the signs.

Therefore, the signs are aurally identical or highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the name or a surname ‘JACOB’, the signs are conceptually identical.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

In the present case the goods and services are partly similar to varying degrees and partly dissimilar and they target public at large and professionals. The degree of attention will vary from average to high.

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).

The signs have been found visually highly similar, aurally identical or highly similar and conceptually identical. They differ in only one letter, the impact of which is limited, since it is a repetition of the last letters; all the remaining letters are identical. The earlier sign enjoys a normal degree of distinctiveness.

Taking into account all of the above, the differences between the signs are minimal. Consequently, they are not sufficient to counteract the similarities and to exclude the possibility that consumers, even with a higher degree of attention, might overlook the differing letter and confuse the signs. Therefore, there is a likelihood of confusion between the signs for the goods and services found to be similar to varying degrees, including those that are similar only to a low degree.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 14 203 087.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Helen Louise MOSBACK

Katarzyna ZANIECKA

Anna ZIOŁKOWSKA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.