OPPOSITION No B 3 041 335

S.D. Sullam Limited, Lyden House, South Road, Templefields Industrial Estate, Harlow, Essex, CM20 2BS, United Kingdom (opponent), represented by Brookes IP, Windsor House, 6-10 Mount Ephraim Road, Tunbridge Wells, TN1 1EE, United Kingdom (professional representative)

a g a i n s t

Oy Udda Finland Ltd, Vasarakatu, 4, 15700, Lahti, Finland (applicant).

On 18/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 041 335 is partially upheld, namely for the following contested goods:

Class 11: Food and beverage heating, cooling and treatment equipment; heating, ventilating, and air conditioning and purification equipment (ambient); personal heating and drying implements; burners, boilers and heaters.

2. European Union trade mark application No 17 437 823 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 437 823 , namely against all the goods in Class 9 and some of the goods in Class 11. The opposition is based on, inter alia, United Kingdom trade mark registration No 834 748 ‘LYVIA’ and Irish trade mark registration No 66 450 ‘LYVIA’. 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 United Kingdom trade mark registration No 834 748 ‘LYVIA’ and Irish trade mark registration No 66 450 ‘LYVIA’.

a) The goods

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

(1) Irish trade mark registration No 66 450 ‘LYVIA’

Class 9: Electrical apparatus and instruments.

(2) United Kingdom trade mark registration No 834 748 ‘LYVIA’

Class 11: Installations and apparatus for lighting, heating and for ventilating; and parts and fittings included in Class 11 for these goods.

The contested goods are the following:

Class 9: Information technology and audio-visual, multimedia and photographic devices.

Class 11: Food and beverage heating, cooling and treatment equipment; heating, ventilating, and air conditioning and purification equipment (ambient); personal heating and drying implements; burners, boilers and heaters.

According to the specification of the goods in Class 11 in the trade mark application, heating, cooling and treatment equipment are to be read as and make reference to the food and beverage heating, cooling and treatment equipment.

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 9

The term electrical apparatus and instruments of earlier mark (1) can be generally defined as apparatus or instruments that work by means of electricity, rather than using some other source of power. Consequently, although one can vaguely try to describe the meaning of the goods, in the present case their natural meaning cannot be sufficiently identified. Due to vagueness of the opponent’s term electric apparatus and instruments, it cannot be construed as such as relating to the contested information technology and audio-visual, multimedia and photographic devices. Since the purpose, nature and method of use have not been expressly identified in the specification. In absence of an express limitation by the opponent clarifying the vague term electric apparatus and instruments, it cannot be identified if any of the abovementioned relevant factors relating to the comparison of the goods would apply. Therefore, the natural meaning of electric apparatus and instruments cannot be sufficiently identified and the goods are considered not to be similar. The same applies when the contested goods are compared with the goods of earlier mark 2.

Contested goods in Class 11

The contested heating, ventilating, and air conditioning and purification equipment (ambient); personal heating and drying implements are types of apparatus that modify the condition of air (i.e. for heating, cooling, (de-)humidification, ventilation, purification, etc.) and are included in the broader category of the opponent’s installations and apparatus for heating and for ventilating of earlier mark 2. Therefore, they are identical.

The contested food and beverage heating equipment is included in the broad category of the opponent’s installations and apparatus for heating purposes of earlier mark 2. Therefore, they are identical.

The contested burners, boilers and heaters are included in the broad category of, or overlap with, the opponent’s installations and apparatus for heating of earlier mark 2. Therefore, they are identical.

The contested food and beverage cooling and treatment equipment is at least similar to a low degree to the opponent’s installations and apparatus for heating of earlier mark (2) as they usually coincide in producer, relevant public and distribution channels.

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 found to be identical are directed at the public at large and a professional public.

The degree of attention may vary from average to higher than average, depending on the price, nature and application of the goods in question.

c) The signs

LYVIA
Earlier trade marks	Contested sign

The relevant territory is the United Kingdom and Ireland.

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 marks are word marks, ‘LYVIA’. The word ‘LYVIA’ as such has no meaning; however, it may be associated by at least part of the public with an abbreviation of the female first name Olivia. Whether it is associated with that meaning or not, it does not refer or allude to any characteristics of the goods in question; therefore, it is distinctive to an average degree.

The contested sign is a figurative mark containing the word element ‘LIVIA’ depicted in a stylised, bold typeface; underneath it is a thin horizontal line, which is purely decorative in nature. Below the horizontal line, the verbal element ‘LIVING A GOOD LIFE’ is depicted in smaller, almost standard, upper case letters. This element will be perceived by the relevant public as a laudatory slogan and its distinctiveness in relation to the relevant goods is low. Although the verbal element ‘LIVIA’ is meaningless as such, it may be perceived as an abbreviation of the female first name Olivia by at least part of the public, and, in view of the goods in question, is distinctive to an average degree.

Due to its size and position, the verbal element ‘LIVIA’ of the contested sign clearly stands out in the overall composition and is therefore considered the dominant (most visually eye-catching) element of the mark.

Visually, the earlier marks and the contested sign coincide in their first letter, ‘L’, and in their last three letters, ‘VIA’, of their distinctive verbal elements ‘LYVIA’ and ‘LIVIA’ respectively. However, they differ in their second letter, ‘Y’, in the earlier marks and ‘I’ in the contested sign. Moreover, the signs differ in the verbal element ‘LIVING A GOOD LIFE’, which is less dominant and its distinctiveness is low, in the horizontal line, which is purely decorative and in the stylisation of the contested sign, which have no counterparts in the earlier marks.

Taking into account that the only distinctive element of the contested sign reproduces four letters out of five, and in the same positions, of the earlier marks, the signs are considered visually highly similar.

Aurally, the pronunciation of the earlier marks and of the distinctive verbal element ‘LIVIA’ of the contested sign coincides in the sounds of their first letter, ‘L’, and their last three letters, ‘VIA’. The pronunciation differs in the sounds of their second letters, ‘Y’ and ‘I’ respectively. However, it cannot be excluded that the letters ‘Y’ and ‘I’ will be pronounced identically. In addition, the signs differ in the sound of the contested sign’s verbal element ‘LIVING A GOOD LIFE’, which distinctiveness is low, in the contested sign, which have no counterparts in the earlier marks.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Part of the public will associate the earlier marks and the contested sign with the same female first name. Although the public will also understand the meaning of ‘LIVING A GOOD LIFE’, given its low distinctiveness it will not create a significant conceptual difference between the signs. Therefore, the signs are conceptually highly similar for this part of the public.

For the part of the public that will perceive only the concept conveyed by the element ‘LIVING A GOOD LIFE’ in the contested sign and will not associate the earlier marks with any particular 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.

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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/or 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 goods are partly identical, partly similar to a low degree and partly dissimilar, the degree of attention is considered to vary from average to higher than average and the degree of distinctiveness of the earlier marks is considered normal.

In spite of the differences arising from the second letters of the earlier marks, ‘LYVIA’, and of the word ‘LIVIA’ of the contested sign, the contested sign’s additional verbal element ‘LIVING A GOOD LIFE’ (which is secondary and has a low degree of distinctiveness) and the stylisation of the contested sign mean that the overall similarity between the signs in question is evident, due to the commonalities at the beginnings and ends of their distinctive verbal elements.

Account must also be taken of the facts 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), and that 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).

Therefore, it is highly conceivable that, when encountering the signs, the relevant consumers will make a connection between them or believe that they originate from the same undertaking or economically linked undertakings. Consequently, it cannot be safely excluded that the relevant consumers, even those with a higher than average degree of attention, will confuse the marks or, alternatively, perceive the contested sign 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, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s United Kingdom trade mark registration No 834 748 and Irish trade mark registration No 66 450.

It follows from the above that the contested trade mark must be rejected for all the contested goods, even for those found to be similar to a low degree, as the obvious similarities between the signs offset the low degree of similarity between the goods and services.

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.

The opponent has also based its opposition on the following earlier trade marks:

Irish trade mark registration No 66 451 for the word mark ‘LYVIA’ for the goods in Class 11. However, as the mark is identical to the one which has been compared and does not cover wider scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

United Kingdom trade mark registration No 834 747 for goods in Class 9. However, the opponent did not submit any evidence showing that the protection of this mark extends beyond 17/05/2017. Based on the United Kingdom Intellectual Property Office online database, accessible through TMview, this mark was merged on 07/02/2017 and the surviving trade mark is UK trade mark registration No 834 748. The Opposition Division cannot establish from the relevant official online database whether registration No 834 747 had been renewed and remained valid after the abovementioned date. Therefore, it is concluded that the opponent has failed to substantiate, in a satisfactory manner, the validity of this earlier mark. According to Article 8(1) EUTMDR, if by expiry of the period referred to in Article 7(1) EUDMR, the opposing party has not proven the existence, validity and scope of protection of its earlier mark, the opposition will be rejected as unfounded. The opposition must therefore be rejected as unfounded as far as it is based on United Kingdom trade mark registration No 834 747.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Rasa BARAKAUSKIENE

Erkki MUNTER

Ferenc GAZDA

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.