OPPOSITION Nо B 3 070 238

 

Kaufland Dienstleistung Gmbh & Co. Kg, Rötelstraße 35, 74172 Neckarsulm, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft Mbb - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative) 

 

a g a i n s t

 

Shenzhenshi Dailiyuan Keji Youxiangongsi, Shenzhenshi Longgangqu Bantianjiedao Yangmei Hulian E Shidai 3lou 320shi, Null Shenzhen, China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª Planta, 28050 Madrid, Spain (professional representative).

 

On 11/09/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 070 238 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 930 717  (figurative mark), namely against all the goods in Classes 20, 22 and some goods in Class 28. The opposition is based on European Union trade mark registration No 17 913 644 ‘LIV&BO’ (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.

 

 

a) The goods

 

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

Class 20: Containers, and closures and holders therefor, non-metallic; furniture and furnishings; statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class; displays, stands and signage, non-metallic; locks and keys, non-metallic; door, gate and window fittings, non-metallic; closures for containers, non-metallic; animal housing and beds; ladders and movable steps, non-metallic; hooks for towels (non-metallic -); fasteners, non-metallic; shower curtain rings; shower curtain rods; plastic knobs; beds, bedding, mattresses, pillows and cushions; indoor blinds, and fittings for curtains and indoor blinds; clothes hangers, clothes stands [furniture] and clothes hooks; frames; mirrors (silvered glass).

Class 22: Bags and sacks for packaging, storage and transport; padding and stuffing materials; raw textile fibers and substitutes; nets; tarpaulins, awnings, tents, and unfitted coverings; sails; ropes and strings; slings and bands.

Class 28: Festive decorations and artificial Christmas trees.

The contested goods are the following:

Class 20: Armchairs; art (works of-) of wood, wax, plaster or plastic; baskets, not of metal; bassinettes; bead curtains for decoration; bed fittings, not of metal; beds; beds for household pets; benches [furniture]; benches (work-); bins, not of metal; boards (display-); bolsters; book rests [furniture]; brackets (picture frame-); brush mountings; cabinet work; chairs [seats]; chests for toys; chimes (wind-) [decoration]; clips (cable and pipe-) of plastics; clothes hooks, not of metal; coat hangers; coatstands; containers of plastic (packaging-); covers for clothing [wardrobe]; curtain rods; cushions; cushions (pet-); deck chairs; decorations of plastic for foodstuffs; desks; dispensers (towel-), not of metal, fixed; display stands; dog kennels; dressing tables; embroidery frames; fans for personal use, non-electric; fittings, not of metal (furniture-); flower-pot pedestals; footstools; frames (picture-); furniture; furniture of metal; hand-held mirrors [toilet mirrors]; head-rests [furniture]; inflatable publicity objects; massage tables; mattresses; mirrors [looking glasses]; nesting boxes for household pets; office furniture; pillows; plate racks; signboards of wood or plastics; sofas; trestles [furniture]; walkers (infant-).

Class 22: Awnings; bags [envelopes, pouches] of textile, for packaging; bags for washing hosiery; wrapping or binding bands, not of metal; cables, not of metal; camouflage (covers for-); camouflage (nets for-); car towing ropes; carbon fibers [fibres] for textile use; cloth (tarred brattice-); cords for hanging pictures; cords (sash-); fibers (textile-); fishing nets; flock (silk-); glass fibers [fibres] for textile use; grasses for upholstering; hammocks; harness, not of metal, for handling loads; ladders (rope-); loads (straps, not of metal, for handling-); nets; network; packing [cushioning, stuffing] materials, not of rubber, plastics, paper or cardboard; packing rope; packing string; ropes; ropes, not of metal; sails; slings, not of metal, for handling loads; string; tarpaulins; thread, not of metal, for wrapping or binding; vehicle covers, not fitted; wadding for padding and stuffing upholstery; wool (upholstery-) [stuffing].

Class 28: Balloons (play-); bells for christmas trees; bonbons (explosive-) [christmas crackers]; candle holders for christmas trees; christmas tree stands; christmas trees of synthetic material; christmas trees (ornaments for-), except illumination articles and confectionery; novelties for parties, dances [party favors, favours]; paper party hats; piñatas; snow for christmas trees (artificial-); snow globes.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

 

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 assumed to be identical are directed at the public at large as well as business customers with specific professional knowledge or expertise.

 

The degree of attention is considered to be average.

c) The signs

 

LIV&BO
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 contested sign’s verbal element do not convey any meaning in the relevant territory. Therefore, it is distinctive.

As far as the earlier trade mark’s verbal element is concerned, the ampersand symbol ‘&’ placed after the three letters ‘LIV’ will be perceived as a logogram that convey the meaning of ‘and’ in the respective languages of the European Union.

It follows from the above that the vast majority of the relevant consumers will perceive the earlier trade mark as formed by the verbal element ‘LIV’ joined with the subsequent component ‘BO’ by the ampersand. None of these subject elements convey a meaning in relation to the relevant goods and are, therefore, distinctive.

 

Visually, the signs coincide in the sequence of letters ‘LI*BO’. Whereas they differ in the letters/symbol ‘V&’ in the earlier mark and ‘OO’ in the contested application. The signs also differ in the stylization of the contested application.

In this regard, it must be stressed that the presence of the ampersand in the earlier mark appears visually striking insofar as this logogram somehow dissect the sequence of letters ‘LIV’ and ‘BO’. Also, the presence of the central letters ‘OO’ in the earlier trade mark and its typeface are visually notable and contributes to differentiate the signs.

Therefore, they are visually similar to a lower than average degree.

  

Aurally,  irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘LI*BO’. Whereas they differ in the sound of the letter ‘V’ in the earlier mark and ‘OO’ in the contested application. The earlier trade mark’s ampersand will be pronounced by the relevant public in accordance with the relevant language, for instance ‘and’ in English, ‘e’ in Italian, ‘y’ in Spanish, ‘i’ in Polish, ‘und’ in German and ‘et’ in French, thus producing a notable sound within the pronunciation of the contested sign.

Therefore, the signs are similar to a lower than average degree.

  

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘&’ in the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any 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 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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, 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. 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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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.

In the present case, the goods have been assumed identical. They target both the general and professional consumers that will pay an average degree of attention.

The signs under comparison have been found visually and aurally similar to a lower than average degree whereas non conceptually similar.

In particular, the relevant consumers will perceive the signs under comparison as having a different structure. Specifically, whereas the earlier sign will be perceived as composed by the verbal elements ‘LIV’ and ‘BO’ joined by an ampersand, the contested application will be understood as a single verbal component. This factor plays a significant role in the assessment of likelihood of confusion between the signs.

In this regard, it must be pointed out that in terms of recognition and recall, that the first part of a sign is generally the one that catches consumers’ attention and will be remembered more clearly than the rest of the sign. However, this does not alter the basic principle that the average consumer normally perceives a mark as a whole and does not proceed to analyze its various details.

Taking all the above into account, it must be concluded that the assessed differences between the signs are capable of maintaining a sufficient distance between the overall impressions given by the signs. For these reasons, the Opposition Division does not find it plausible that the relevant consumer, who is considered reasonably well informed and reasonably observant and circumspect, might believe that the goods assumed to be identical come from the same undertaking or economically linked undertakings.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

  

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

 

The Opposition Division

 

 

María Clara IBÁÑEZ FIORILLO

Aldo BLASI

Francesca CANGERI

 

 

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.