OPPOSITION No B 3 077 462

Emil Lux GmbH & Co. KG, Emil-Lux-Str. 1, 42929, Wermelskirchen, Germany (opponent), represented by Dompatent von Kreisler Selting Werner - Partnerschaft Von Patentanwälten Und Rechtsanwälten Mbb,, Deichmannhaus am Dom, Bahnhofsvorplatz 1, 50667, Cologne, Germany (professional representative)

a g a i n s t

Ningbo Panera Lighting Co.,Ltd., Jiangnan Village, Gaoqiao Town, Haishu District, 315175, Ningbo, Zhejiang, People’s Republic of China (applicant), represented by IPSIDE, 6 Impasse, Michel Labrousse, 31100, Toulouse, France (professional representative).

On 23/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 077 462 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 and of European Union trade mark application No 17 979 017 , namely all the goods in Classes 9 and 11.

The opposition is based on European Union trade mark registrations No 11 147 361 ‘LUX’ and No 11 147 345 . 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 European Union trade mark registration Nos 11 147 361.

1. The goods

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

Class 1: Tempering and soldering preparations; adhesives used in industry.

Class 3: Cleaning, polishing and abrasive preparations; abrasive paper.

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants.

Class 6: Common metals and their alloys; materials of metal for railway tracks; ores; metal building materials; transportable buildings of metal; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; goods of metal, included in class 6; garage doors of metal; tool chests of metal (empty); safes; locks (other than electric) of metal; padlocks; hoppers (non-mechanical) of metal; ladders of metal, stepladders of metal; pegs of metal; wall plugs of metal; fittings of metal for building; fittings of metal for furniture; tensioning and lashing straps; rods of metal for brazing and welding; soldering wire of metal; posts of metal; wire rope; workshop equipment, as far as included in international class 06, including tool holders (aforesaid goods of metal); tool boxes of metal (empty); handles of metal for tools and garden implements; carry straps of metal; oil cans, special-purpose containers, included in class 06 (the aforesaid goods being of metal); posts of metal for attaching marking aids, in particular barrier tapes and warning tapes; gates of metal; locksets; pegs of metal; wall plugs of metal; trellis and espaliers; clips; clips and nails for hand tackers; metal garage door rollers; rollers of metal for sliding doors; none of the aforementioned goods being blinds, shutters, windows, skylights, roof-windows or accessories hereto.

Class 7: Machines and machine tools, machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; machines and machine tools, namely colour mixing machines, building machines, in class 7; mechanical tools for construction, horticultural and craft purposes, mechanical horticultural and agricultural equipment; compressors [machines]; spray guns for paint, compressed air guns for the extrusion of mastics, electric glue guns, electric power staplers; pistols and pumps for applying paints, mastics and other viscous preparations; gas-powered soldering irons; drill chucks (parts of machines), drilling machines, electric hand drills, nut-tapping machines, drill stands for electric hand drills; planing machines; trueing machines, grinding discs (being a machine part), cutting discs (parts of machines), grinding wheels (parts of machines); saws (machines), chain saws; current generators; welding apparatus, gas-operated; welding machines, electric; lawnmowers (machines), scarifiers (other than hand-operated); tillers (other than hand-operated); soil ventilators (other than hand-operated); snow blowers (other than hand-operated); snow shovels (other than hand-operated); snow sweepers (other than hand-operated); parts for motors and engines, namely spark plugs for internal combustion engines, mufflers for motors and engines (exhausts), petrol and oil filters, filters for cleaning cooling air for motors and engines, cylinders for motors and engines, cylinder heads for motors and engines, pistons for motors and engines, piston rings;  electric drives for garage doors; elevators, in particular hoists; electric arc welding apparatus; lathes (machine tools); electric turning machines; electric straw cutting machines, motorised straw cutting machines; grindstones (machine parts); machines for tile laying, gas concrete and dry construction, stone, screed and concrete works, electrical and sanitary installation, masonry, parquet floor, laminate and carpet laying, plastering, painting, wallpapering and welding; electric tools for construction and diy, including tool bits therefor; cordless screwdrivers, chainsaws, grinders, polishers; drilling hammers, electric planers, tile cutting machines, small electric tools, electric staplers, electric milling machines; mechanical garden implements, including lawnmowers and grass-trimming machines; border shears and chainsaws, and accessories for mechanical garden equipment, namely collecting devices and apparatus covers; spare parts for mechanical garden tools, included in class 7; driving machines for tools; mobile generators; soldering and welding machines (gas-operated); compressed air tools; lathes (machine-operated); wood-turning lathes (machine-operated); pressure spraying devices (machine-operated); couplings other than for land vehicles; grinding inserts, grindstones and replacement parts for the aforesaid goods; rollers and wheels for machines; soldering irons, electric; welding apparatus; none of the aforementioned goods being blinds, shutters, windows, skylights, roof-windows or accessories hereto.

Class 8: Manually operated tools; hand-operated implements for agricultural, horticultural and forestry purposes, and for structural engineering; hand-operated vaporisers; hand-operated guns for applying paints, mastics and other thick fluid products, guns, hand-operated, for the extrusion of mastics; spatulas [hand tools]; snow shovels (hand tools); ice scrapers; sharpening stones; tackers (hand-operated); hand-operated riveting tools; trowels; saws (hand tools); files [hand tools]; clamps for carpenters or coopers; tongs [hand tools]; screwdrivers; wrenches (hand tools); hammers (hand tools); axes; lawn clippers (hand instruments); border shears; planes; stationery scissors; riveting pincers; scraping tools (hand tools); hand tools for tile laying, gas concrete and dry mortarless construction, stone, screed and concrete works, electrical and sanitary installation, masonry, parquet floor, laminate and carpet laying, plastering; painting and welding; hand tools, including cutting, separating, embossing and striking tools, in particular japanese chisels, borers, rasps, thread cutters, planes, trowels, chisels, screwdrivers, socket wrenches and socket wrench sets, vices, pliers, tool holders, hand-operated grippers and carrying equipment, including stone-carrying equipment, sanding blocks, ferrules of metal, hand riveters, eyelet pliers; hand-operated tile-cutting apparatus, knives, in particular pocket knives, cutter blades, glass cutters, carpet knives, blades, cutters; scissors, including household scissors, secateurs, branch, tree and hedge clippers, hand-operated garden implements, including forks, hoes, spades, shovels, rakes, sickles, scythes, trimmers and hand-operated lawnmowers; hand-operated vaporisers; hand-operated pneumatic apparatus; spare parts for the aforesaid goods; electric flat irons.

Class 9: Signalling, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; fire-extinguishing apparatus; electric installation material (included in class 9), namely electric cables and electrical wire; material for electricity mains (wires, cables); lustre terminals; plugs, sockets and other contacts [electric connections]; covers for electric outlets; cable ducts; volt meters; electric welding apparatus; welding electrode; solderers' helmets; time switches, automatic; electronic security systems, namely motion detectors, gas, smoke and carbon monoxide detectors, electric theft prevention installations, bells (warning devices), optical data media, video cassettes; solar energy collectors for electricity generation; electric batteries, battery charging equipment; thermostats; thermometers (not for medical purposes); scales; work protection clothing (included in class 9); protective helmets, protective sports helmets, arm, knee and wrist guards (work safety); gloves for protection against accidents; locks, electric; gloves for protection; protective goggles and masks; safety belts and fastening belts, except for vehicle seats, included in class 9; voltage detectors; intercommunication systems; marking aids, in particular barrier tapes and warning tapes; none of the aforementioned goods being blinds, shutters, windows, skylights, roof-windows or accessories hereto.

Class 10: Hearing protectors.

Class 12: Load and transport rollers; rollers and wheels for vehicles; hose carts; rollers and wheels for barrows and sack-barrows.

Class 16: Printed matter; bookbinding material; photographs; adhesives for stationery or household purposes; artists' materials; paintbrushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus).

Class 17: Flexible pipes, not of metal; insulating gloves;  none of the aforementioned goods being blinds, shutters, windows, skylights, roof-windows or accessories hereto.

Class 18: Tool bags (empty); tool chests of leather (empty); tool bags (empty), not of metal, not of leather.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitume; none of the aforementioned goods being blinds, shutters, windows, skylights, roof-windows or accessories hereto.

Class 20: Dowels, not of metal; wall plugs, not of metal; locks (other than electric), not of metal; pasting tables; racks [furniture]; tool stands, not of metal; door stoppers, not of metal; workshop equipment, included in class 20, including tool cabinets, small parts storage boxes, open storage boxes, sorting boxes, tool holders, machine tables, tool stands, workbenches (the aforesaid goods not of metal); workshop equipment (furniture), including tool cabinets, storage boxes for small parts, open storage boxes, sorting boxes, machine tables, tool stands, workbenches (the aforesaid goods being of metal); paste tables, clamping tables; tool boxes and tool chests (empty), not of metal, not of leather; handles for tools and garden implements, not of metal; plastic chains, rope and chain clamps, bolts, plugs, screws, nuts, washers, hooks, rivets (the aforesaid goods all not of metal); transport pallets; special-purpose containers, not of masonry, not of metal, included in class 20; ladders of wood or plastic, stepladders, not of metal; furniture glides of felt and plastic; coat hangers; casters of metal for beds; casters, not of metal, for beds; none of the aforementioned goods being blinds, shutters, windows, skylights, roof-windows or accessories hereto.

Class 21: Sponges; articles for cleaning purposes; steelwool; brooms; funnels.

Class 22: Ropes, string, nets, tents, tarpaulins, sails, sacks and bags (so far as included in class 22); raw fibrous textile materials; tensioning and lashing straps, not of metal; none of the aforementioned goods being blinds, shutters, windows, skylights, roof-windows or accessories hereto.

Class 26: Hooks and eyes, pins and needles; velcro.

The contested goods are the following:

Class 9: Data processing apparatus; weighing machines; measures; cabinets for loudspeakers; microphones; headphones; teaching apparatus; measuring devices, electric; materials for electricity mains [wires, cables]; semi-conductors; junction boxes [electricity]; converters, electric; switches, electric; plugs, sockets and other contacts [electric connections]; control panels [electricity]; light dimmers [regulators], electric; remote control apparatus; fire extinguishers; protection devices for personal use against accidents; clothing for protection against fire; theft prevention installations, electric; smoke detectors; battery chargers; batteries, electric.

Class 11: Cooking apparatus and installations; kettles, electric; freezers; refrigerators; air purifying apparatus and machines; extractor hoods for kitchens; heating apparatus; steam generating installations; heating installations; sanitary apparatus and installations; solar thermal collectors [heating]; disinfectant apparatus; water purifying apparatus and machines; radiators, electric; industries.

Some of the goods in conflict are identical such as electric batteries identically included in both lists, and some are similar such as the contested sanitary apparatus and installations and the opponent’s building materials (non-metallic). 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.

2. 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 both at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

3. The signs

LUX
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).

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he or she will break it down into elements which, for him or her, suggests a concrete meaning or which resemble words known to him/her (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

The word ‘LUX’ included in both signs is likely to be perceived by consumers as a short for ‘luxury’, either because they are aware of the rather basic English word ‘luxury’ meaning ‘expensive and high quality; luxurious’ or they associate it with ‘luxe’ or ‘de luxe’ used as indication of luxury or luxurious (https://www.collinsdictionary.com/dictionary/english/luxe; 16/12/2019 and https://www.collinsdictionary.com/dictionary/english/de-luxe; 16/12/2019). In fact, the English or French term ‘deluxe’ or ‘de luxe’ are widely used in marketing and advertising for various products and consumers throughout the relevant territory will recognize it as a reference to a superior quality. In addition, there are visually and/or aurally similar or equivalent terms to express ‘luxury’ in their languages, such as ‘luxe’ in French and Dutch, ‘Luxo’ in Portuguese, ‘Lux’ in Romanian and Polish, ‘Lukss’ in Latvian, ‘Luxus’ in Czech and Hungarian, ‘Luksuz’ in Slovenian, ‘Luksus’ in Estonian, Danish and Polish, for example. Consequently, the distinctiveness of the word ‘LUX’ is reduced because it will be perceived as a strong allusion to positive aspects such as sophistication or high quality of the goods rather than as a badge of commercial origin. It is also to be noted that ‘LUX’ may be perceived by part of the public throughout the relevant territory as the measurement unit for illumination and, therefore, in association with lighting. Given that several of the relevant goods such as the contested semi-conductors; junction boxes [electricity]; converters, electric; switches, electric; control panels [electricity]; light dimmers [regulators] are directly related to electricity and lighting, this word is also very weakly distinctive or even non-distinctive, at least in relation to goods of such nature.

Overall, it must be concluded that the signs’ coinciding word ‘LUX’ is, at most, weakly distinctive from the perspective of the relevant public, in relation to all the goods at issue.

The contested sign’s additional word ‘Panera’ is meaningful in Spanish (‘breadbasket’) and lacks any meaning in the remaining languages. In both cases, in the absence of direct relation to the goods at issue, this word has a normal degree of distinctiveness. It is to be noted here, in response to the opponent’s observation, that the fact that ‘panera’ is the name of the applicant bears no relevance as this verbal element must solely be assessed on the basis of how the relevant consumers perceive it.

Visually and aurally, the signs coincide in ‘LUX’ and differ in the contested sign’s additional word ‘PANERA’ and in the colour of the fonts. This means that the contested sign is composed of a total of nine letters constituting a total of four syllables as opposed to the earlier mark’s three letters and one syllable. In addition, the coinciding element falls at the end of the contested sign and is weakly distinctive, as explained above. The signs are further differentiated visually by the use of colours in the contested sign although this admittedly has a limited impact. Overall, the differences have a significant visual and aural impact since they result in the signs having rather different length, rhythm and intonation. It is recalled that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, consequently, it will be the beginning of the contested sign that consumers will perceive, pronounce and recollect while they will attribute much less importance to the sign’s second element. Based on all the foregoing, the signs are similar only to a low degree.

Conceptually, from the perspective of the Spanish-speaking public, the contested sign evokes the concept of ‘breadbasket’ which is completely missing from the earlier mark while the coinciding word evoking a weak concept has a very limited conceptual impact. For the remaining part of the public, the differing element is meaningless. Therefore, the signs are similar, at most, to a low degree.

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

4. 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

5. Global assessment, other arguments and conclusion

It is recalled that the fact that one of the components of a composite trade mark is identical to another trade mark does not mean that those two marks are similar unless that component constitutes the dominant element within the overall impression created by the composite mark. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (20/09/2007, C 193/06 P, Quicky, EU:C:2007:539, § 43 and the case-law cited; 23/10/2002, T 6/01, Matratzen, EU:T:2002:261, § 33).

The goods are assumed to be identical while the signs are similar to a low degree visually and aurally and at most to a low degree conceptually. The different verbal component is clearly perceivable and its position, length and distinctiveness have the consequence that consumers are likely to perceive, pronounce and recollect, first and foremost, this element, also because the remaining, common, element is of limited distinctiveness. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

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.

The opponent has also based its opposition on based on European Union trade mark registration No 11 147 345 . Even assuming that the goods protected by this earlier mark were to be identical to the contested goods, the above findings concerning the degree of similarities between the signs and the consequent lack of likelihood of confusion apply even more clearly to this earlier mark since it contains additional verbal, figurative and colour elements which make this mark even less similar to the contested sign, from all aspects of the comparison. Therefore, no likelihood of confusion exists with respect to this earlier mark, either.

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

Rosario GURRIERI

Ferenc GAZDA

Biruté SATAITE-GONZALEZ

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.