OPPOSITION No B 3 067 179

Jula AB, Box 363, 532 24 Skara, Sweden (opponent), represented by Hansson Thyresson AB, Norra Vallgatan 58, 20120 Malmö, Sweden (professional representative)

a g a i n s t

Flair Showers Limited, Conex Works, Santry Avenue Santry, Dublin 9, Ireland (applicant), represented by Frkelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative).

On 18/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 179 is upheld for all the contested goods.

2. European Union trade mark application No 17 933 924 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 17 933 924 for the word mark ‘ula’. The opposition is based on, inter alia, international trade mark registration No 1 108 230 for the word mark ‘JULA’ designating the European Union. 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 international trade mark registration No 1 108 230 designating the European Union.

a) The goods

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

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilation, water supplying and sanitary purposes; parts and components for the aforesaid named goods included in class.

The contested goods are the following:

Class 11: Apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; bath fittings; bath installations; bath linings; bath plumbing fixtures; bath tubs; bath screens; shower cubicles; shower enclosures; showers; sinks; slider doors for showers; slide panels for showers; shower trays; wet room shower screens; parts and fittings for all the aforesaid goods.

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.

Apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; parts and fittings for all the aforesaid goods are identically contained in both lists of goods (including synonyms).

The contested bath installations; bath plumbing fixtures; bath tubs; shower cubicles; shower enclosures; showers; sinks; shower trays; parts and fittings for all the aforesaid goods are included in the broad category of, or overlap with, the opponent’s apparatus for water supplying and sanitary purposes; parts and components for the aforesaid named goods included in class. Therefore, they are identical.

The remaining contested goods, namely bath fittings; bath linings; bath screens; slider doors for showers; slide panels for showers; wet room shower screens; parts and fittings for all the aforesaid goods are fittings or components for apparatus for water supplying and sanitary purposes. Therefore, the contested goods are complementary to the opponent’s apparatus for water supplying and sanitary purposes; parts and components for the aforesaid named goods included in class. In addition, these goods coincide in distribution channels and points of sale, can be directed at the same consumers and are likely to come from the same kind of undertakings. The contested goods are, therefore, considered to be similar at least to a high degree to the opponent’s goods.

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 or similar at least to a high degree are directed at the public at large (i.e. DIY enthusiasts) and at professionals with specific professional knowledge or expertise (e.g. professionals in the area of plumbing or construction). The degree of attention may vary from average to above average, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

JULA	ula
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).

Both marks are word signs. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is presented in upper or lower case characters, or in a combination thereof. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43).

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements ‘JULA’ and ‘ula’ are not meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

As they are meaningless for the relevant public, they are distinctive.

Visually and aurally, the signs coincide in the letters and the pronunciation of sound of the letters ‘*ULA’ of the earlier mark and ‘ula’ of the contested sign. However, they differ in the first letter/sound of the letter of the earlier mark, namely ‘J’.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison 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.

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.

In the opponent’s submissions of 08/07/2019, it refers to the ‘considerable goodwill’ it has built up in its mark. If this was intended as a claim of an enhanced distinctive character it cannot succeed, since no evidence was submitted to support this finding.

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 on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). 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).

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).

As seen above, the goods are partly identical or partly similar (at least to a high degree) and target the general public and professionals whose degree of attention will vary from average to above average. The earlier mark enjoys an average degree of distinctiveness. The signs are visually and aurally similar to an average degree. The conceptual aspect does not influence the assessment of the similarity of the signs.

Account is also 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). 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).

The similarity between the signs resulting from the same string of letters ‘ula’ may give way to confusion as the only difference is the first letter in the earlier mark, namely ‘J’. As the goods are identical and partly similar (at least to a high degree) and due to the visual and aural similarities (following the interdependence rule), even bearing in mind that the signs in question are rather short, a likelihood of confusion exists.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 108 230 designating the European Union territory. 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, namely international trade mark registration No 1 108 230 designating the European Union territory, 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, 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

Vanessa PAGE

Michal KRUK

Chantal VAN RIEL

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.