OPPOSITION No B 3 055 752

Nicola Philipps, An der Mosel 39b, 56841 Traben-Trarbach, Germany (opponent), represented by Kanzlei Kötz Fusbahn, Blumenstraße 7, 40212 Düsseldorf, Germany (professional representative)

a g a i n s t

Jorge Keim Haass, C/ Marqués de Valenzuela 5 (Urb. J. del Águila), 29649 Mijas Costa (Málaga), Spain (applicant), represented by Onofre Indalecio Sáez Menchón, Gran Via, 69 -4° Of. 412, 28013 Madrid, Spain (professional representative).

On 20/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 752 is upheld for all the contested goods.

2. European Union trade mark application No 17 869 614 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 17 869 614 ‘LUX 5 WINES’. The opposition is based on German trade mark registration No 3020 172 365 55 ‘LUXX’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON THE CHANGE OF THE OPPONENT

The opposition was initially filed by Zimmermann-Graeff & Müller GmbH. However, on 29/05/2019 the opponent communicated to the Office that the only earlier mark on which the opposition is based, namely German trade mark registration No 302 017 236 555, had been transferred to Nicola Philipps, who thus became the new opponent. With the same communication, the opponent informed the Office also of the change of professional representative to Kanzlei Kötz Fusbahn.

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.

a) The goods

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

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 33: Alcoholic beverages (except beer); Wine.

Alcoholic beverages (except beer) are identically contained in both lists of goods.

The contested wine is included in the broad category of the opponent’s alcoholic beverages (except beer). Therefore, they are identical.

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. The degree of attention is average.

c) The signs

LUXX	LUX 5 WINES
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 element ‘LUXX’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive. At the most, it will be only vaguely allusive to the idea of luxury. ‘Luxx’ with double ‘x’ does not exist as such (information extracted from Duden used on 17/06/2019 at https://www.duden.de/suchen/dudenonline/lux). ‘Lux’ on its own in German only means unit of illuminance. The substantive of luxury is ‘Luxus’ and the expression commonly used for luxurious is ‘de luxe’.

As the opponent has not claimed enhanced distinctiveness, the earlier mark on the whole has an average degree of distinctiveness.

The same holds true for the element ‘LUX’ of the contested sign. It is at the most allusive, for the reasons set out above, and therefore has an average degree of distinctiveness. The number ‘5’ has no special relationship with the relevant goods and therefore also has an average degree of distinctiveness. The element ‘WINES’ will be immediately understood as an alcoholic drink made from fermented grape juice, since this English word is very close to the German equivalent word ‘Wein’, apart from the fact that in Germany English is understood in general. In consequence, as this element describes the nature of the relevant goods, it is non-distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the first three letters ‘LUX’. They differ in the additional letter ‘X’ in the earlier mark and in the elements in second position in the contested sign: the number ‘5’ and the non-distinctive word ‘WINES’. They further differ in the fact that the earlier mark is a single word whereas the contested sign is composed of three elements. Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in ‘LUX’/’LUXX’, since the presence of the double ‘x’ in the earlier mark will not make the relevant public pronounce the earlier mark in a different manner from the first element of the contested sign. The pronunciation differs in the contested sign’s following verbal elements: ‘5’ and the non-distinctive ‘WINES’. Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the public who will not perceive any meaning in ‘LUXX’ of the earlier mark and ‘LUX’ of the contested sign, since the earlier mark has no meaning in that territory, but the contested sign conveys the meanings of ‘5’ and ‘WINES’, the signs are not conceptually similar. For the public who will perceive the same meaning in the coinciding elements ‘LUXX’/’LUX’, the signs are conceptually similar to a high degree, due to the fact that ‘WINES’ is non-distinctive and that the number ‘5’ might not be perceived as an indicator of origin but as a version of a product.

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

d) 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 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 goods in the present case are identical.

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).

The earlier mark has an average degree of distinctiveness and the contested sign’s first element is aurally identical to it.

The rest of the elements of the contested sign follow ‘LUX’ and furthermore the element ‘WINES’ is non-distinctive. There is a likelihood of confusion because the differences between the signs are insufficient to outweigh the overall similar impressions caused by ‘LUXX’ and the first element of the contested sign ‘LUX’ in the consumer’s minds.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (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 public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 3020 172 365 55 ‘LUXX’. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Valeria ANCHINI

Irena LYUDMILOVA LECHEVA

Justyna GBYL

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.