OPPOSITION Nо B 3 092 972

 

Koot B.V., Kingsfordweg 151, 1043 GR Amsterdam, The Netherlands (opponent), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, The Netherlands (professional representative) 

 

a g a i n s t

 

Shenzhen Yalaite Technology Co., Ltd., F/2, Standard Plant, No.4, Hedian Ind. Park, Shijing Community, Longhua Dist., 518000 Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center Vertas Gynéjų Str. 16, 01109 Vilnius, Lithuania (professional representative).

On 14/12/2020, the Opposition Division takes the following

DECISION:

 

1.	Opposition No B 3 092 972 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 060 903 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 18 060 903 for the figurative mark . The opposition is based on, inter alia, Benelux trade mark registration No 819 126 for the word mark ‘KOOT’, in relation to which the opponent invoked Article 8(1)(a) and Article 8(1)(b) EUTMR. In addition, the opponent has invoked Article 8(4) EUTMR in relation to a trade name ‘KOOT’ used in the course of trade in the Netherlands.

PROOF OF USE

 

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of earlier Benelux trade mark registration No 819 126 for the word mark ‘KOOT.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 06/05/2019. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Benelux from 06/05/2014 to 05/05/2019 inclusive.

 

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 11: Lighting apparatus, lamps and lighting armatures; parts for the aforementioned goods.

 

Class 20: Furniture, mirrors, frames; of wood, cork, cane, reed, wicker, horn, bone, ivory, whalebone, tortoiseshell, amber, mother-of-pearl, meerschaum, substitutes for all these materials or products made of plastic as far as not included in other classes.

Class 35: Advertising; business management; commercial intermediation services for the purchase and sale of goods and services in classes 11 and 20.

 

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 01/04/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 05/06/2020 to submit evidence of use of the earlier trade mark. On 05/06/2020, within the time limit, the opponent submitted evidence of use.

 

The evidence to be taken into account is, in particular, the following:

 Annex 2: Several printouts and screenshots from the Internet Archive ‘Wayback Machine’ (https://archive.org/web/), from the website of opponent: www.koot.com. The screenshots are dated in the years 2011 - 2019 (one screenshot for each year of this period has been provided, except for 2016). They show use of the signs and in relation to diverse lighting apparatus (lamps, hanging lamps, wall lamps, floor lamps), such as:

(from 27/09/2018): the illustrated models of lamps include Foscarini, Modular Duell and Luceplan;

(from 17/12/2014).

The printouts also mention contact details of the opponent (e-mail, telephone numbers), as well as the address of a ‘KOOT’ store in Amsterdam (located at Raadhuisstraat 55).

 Annex 3: Screenshots from the website Google Street View, from the period 2014 – 2016, showing the opponent’s lighting store, in Amsterdam, the Netherlands, at the aforementioned address. The sign ‘KOOT.COM’ in grey is well visible on the store’s windows and diverse lamps and lighting apparatus can be observed in the shop’s interior.

 Annex 4: Extract from the ‘Who Is’ domain name information website, showing that the domain name www.koot.com was first registered on 1997-11-06.

 Annex 5: Screenshots from the opponent’s website www.koot.com, made on 03/06/2020. The printouts show use of the sign in relation to diverse lighting apparatus and lamps (pendant lighting, hanging lamps, ceiling lamps, floor lamps, desk lamps, chandeliers, etc.). The models displayed for sale include the following:

and

.

 Annex 6: a considerable amount of order confirmations and invoices/bill tickets issued by the opponent and addressed to clients in the Netherlands. All the documents are dated between the years 2012 and 2019, with several invoices/orders for each of the years composing this period. They show use of the signs ‘KOOT’, and (displayed at the top and in larger lettering on the respective documents, as it is a standard commercial practice on invoices, sales orders and similar documents) in relation to the sale of diverse lighting apparatus (lamps, hanging lamps, LED strips, floor lamps, etc.). The documents show the order/sale of these goods to different clients, all with addresses in the Netherlands, for considerable amounts in EUR. The models of lamps sold under the above quoted signs include some of the models illustrated in the previously cited screenshots from the opponent’s website (both from the Wayback Machine and from 03/06/2020), such as the Luceplan-Costanza floor lamp model (invoice of 13/08/2018), Nomad lamps (invoice of 09/08/2013), Foscarini and Artemida models of hanging lamps/chandeliers (invoice of 30/10/2019), etc.

 Annex 8: Article from the Dutch newspaper ‘De Volkskrant’, dated 08/10/2016, about the European Union’s ban on halogen lamps. The article mentions the lamp store ‘KOOT’ in Amsterdam and analyses the advantages of LED lamps offered for sale therein.

 Annex 9: Pictures from a promotional magazine titled ‘KOOT Wonen volgens KOOT’ (‘Living according to KOOT’), issued by the opponent and dated from October 1998. It includes pictures of the opponent’s shops in the Netherlands, including the aforementioned store in Amsterdam, as well as of different models of chandeliers and hanging lamps offered therein.

As a preliminary note, it is important to highlight that when assessing genuine use the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

All the documents show that the place of use is the Netherlands. This can be inferred from the language of the documents (Dutch, with partial English translations), the currency mentioned in the invoices/order confirmations (Euros), the address of the opponent’s store and the addressees of the products sold, all based in the Netherlands. Considering the size of the Benelux market, as well as the intensity, regularity and long-standing use shown by the opponent, the Opposition Division deems that the evidence submitted is sufficient to constitute genuine use in the whole relevant territory, Benelux. In this regard, it is important to note that when assessing the geographical dimension of the use of a trade mark, the appropriate approach is not that of political boundaries but of markets. Moreover, one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use.

Most of the evidence is dated within the relevant period. Some documents pre-date or post-date the relevant period, but they are clearly presented in a succession which shows a continued use of the sign on the marketplace.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

 

In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. For instance, the recent screenshots from the opponent’s website (Annex 5) or some of the last invoices submitted both post-date the relevant period; nonetheless, they constitute relevant indications as regards the genuine use of the sign, since it is possible to establish that they refer to the sale of models of lamps which were already advertised on the opponent’s website during the relevant period (as established by crossing the information provided from the invoices/order confirmations in Annex 6 and the articles displayed from the Wayback Machine archives in Annex 2); consequently, these documents merely confirm the continuity of the opponent’s business beyond the referred time period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

 

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices and order confirmations for the sale of a considerable number of products (diverse types of lamps and lighting apparatus) throughout the entire relevant period and to different customers, the extract from articles from independent sources (Dutch press) and the screenshots from the opponent’s website (most of which relate to the relevant period) all provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Indeed, use of the mark need not be quantitatively significant for it to be deemed genuine. In the present case, it is considered that the use shown by the opponent is sufficiently intense, frequent and long-standing to constitute genuine use, as it demonstrates that the opponent has actively used the sign at issue in order to acquire and maintain a share in the relevant Benelux market of lighting apparatus.

Therefore, the Opposition Division considers that the opponent has provided convincing indications concerning the extent of use of the earlier mark.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The evidence submitted shows that the mark has been used in accordance with its function and as registered for some of the goods for which it is registered. Indeed, the sign appears throughout the evidence as being used with a rather minimal stylisation ( , or ), which in no way affects the distinctiveness of the mark as registered (word mark ‘KOOT’) and constitutes an acceptable variation of a purely decorative character: the use of bold lettering and a manifestly common typeface are common graphic resources; furthermore, the addition of descriptive elements like ‘.COM’ serves a purely informational purpose (to indicate to the consumers that the goods are also available online at the respective website). It follows that these small additions do not alter the distinctive character of the mark in the form in which it was registered (a word mark).

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

 

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

 

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark. According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

For reasons of procedural economy, in the present case it is sufficient to note that the evidence submitted shows genuine use of the trade mark ‘KOOT’ for diverse types of lamps and lighting apparatus (hanging lamps, wall lamps, floor lamps, chandeliers, pendant lighting, ceiling lamps, desk lamps, etc.). Therefore, the Opposition Division finds that it should not unduly restrict the scope of protection of the earlier mark as regards these categories of goods in Class 11 and that the opponent has shown that its mark is applied to a sufficient variety of products within the broad categories of lamps and lighting apparatus.

Consequently, it is considered that use of the earlier right has been proven at least for the following goods:

Class 11: Lighting apparatus, lamps.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 11: Lighting apparatus, lamps.

 

The contested goods are the following:

Class 11: Electric night lights; electric lamps; lamps; street lamps; light-emitting diodes [LED] lighting apparatus; electric flashlights; fairy lights for festive decoration.

The contested lamps are identically contained in both lists of goods.

The contested electric lamps and street lamps are all included in the broad category of the opponent’s lamps. Therefore, they are identical.

The contested electric night lights; light-emitting diodes [LED] lighting apparatus; electric flashlights; fairy lights for festive decoration are all included in the broad category of the opponent’s lighting apparatus. 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 and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

c)  The signs

 

KOOT
Earlier trade mark	Contested sign

 

The relevant territory is Benelux.

 

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 common verbal element ‘KOOT’ is meaningless for the relevant public. Consequently, it is normally distinctive in relation to the relevant goods in Class 11, as it conveys no information as regards their characteristics.

The applicant claims that the “exclusive typeface” of the contested sign is so stylised that it even “makes it difficult for the EUTM application to be identified as ‘KOOT’”. The Opposition Division respectfully disagrees with this finding and considers that the vast majority of the public will readily identify and read the contested sign as ‘KOOT’, since consumers are used to commercial brands being written in similar stylised typefaces and instinctively perform the mental operations necessary to comprehend and read them. In such a context, as consumers will read and pronounce the verbal element of the sign in order to refer to the corresponding goods, and considering that the use of stylised typefaces is a common feature on the marketplace, consumers will normally attach more trade mark significance to the verbal component of a sign than to its stylisation.

The contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the verbal element ‘KOOT’, which constitutes the earlier mark and is entirely reproduced in the contested sign. They differ solely in the figurative composition of the contested sign, i.e. in the stylised way in which the element ‘KOOT’ is depicted therein. However, as explained above, the verbal element of the contested sign will attract the public’s attention to a greater extent, as an indicator of the commercial origin of the relevant goods.

In addition, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, the figurative component (consisting of the stylisation of its lettering) of the contested sign will be perceived by the public as an essentially ornamental feature of the sign.

Therefore, bearing all the above in mind, the marks are considered visually similar to a high degree.

Aurally irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides entirely, since they share the same verbal element, ‘KOOT’, whereas the figurative component of the contested sign has no impact in the aural comparison. It follows that the signs are aurally identical.

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.

 

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 contested goods in Class 11 are identical to the goods covered by earlier Benelux trade mark registration No 819 126. The earlier mark is distinctive to an average degree.

The signs under comparison are visually highly similar and aurally identical, on account of the fact that the earlier mark as a whole, ‘KOOT’, is fully reproduced as the only verbal element of the contested sign. The conceptual aspect does not influence the assessment of the similarity of the signs, as none of them conveys a meaning for the relevant public.

It must be noted that according to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

As explained above in section c) of this decision, the relevant consumers will not afford considerable attention to the figurative and stylisation features of the contested sign, because they will be perceived as standard graphic means of bringing the verbal element in question to their attention. Therefore, consumers will focus their attention essentially on the verbal element ‘KOOT’ of the contested sign, as they will perceive it as the main indicator of commercial origin contained in the sign.

It must be noted 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). Consequently, the Opposition Division considers that the significant similarities between the marks under comparison are sufficient to lead to a likelihood of confusion, even for highly attentive consumers.

Furthermore, considering that the incorporation of a new stylisation and/or a new ornamentation of the respective brand’s lettering is a standard market practice, and given the reproduction of the same distinctive element, ‘KOOT’, it is highly conceivable that in the present case the relevant consumers 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 or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

The applicant claims that the goods in question will be visually examined by the consumers prior to purchase and that given the visual differences between the signs, there is no likelihood of confusion. The Opposition Division concurs with the applicant to the extent that it is indeed a well-established principle that where the relevant goods may be visually examined by the public prior to the purchase, consumers will be guided by the visual impact of the mark they are looking for and that, consequently, the impact of the visual comparison between the signs needs to be given appropriate weight. Nonetheless, in the present case, the signs were considered visually similar to a high degree. Consequently, and contrary to the claim put forward by the applicant, the visual comparison further underlines the strong similarities between the marks under comparison.

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 well founded on the basis of the opponent’s Benelux trade mark registration No 819 126. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Benelux trade mark registration No 819 126 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 right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and Article 8(4) EUTMR.

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

Dorothée SCHLIEPHAKE

Gueorgui IVANOV

Jiri JIRSA

 

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.