OPPOSITION Nо B 3 093 192

 

Norma Lebensmittelfilialbetrieb Stiftung & Co. Kg, Heisterstr. 4, 90441 Nürnberg, Germany (opponent), represented by Betten & Resch Patent- und Rechtsanwälte Partgmbb, Maximiliansplatz 14, 80333 München, Germany (professional representative) 

 

a g a i n s t

 

Normagrup Technology, S.A., Parque Tecnológico de Asturias, Parcela 10, 33428 Llanera, Asturias, Spain (applicant), represented by Eurokonzern, C/ Marceliano Santa María 9-bajo, 28036 Madrid, Spain (professional representative).

On 19/01/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1. Opposition No B 3 093 192 is upheld for all the contested goods and services, namely: Class 11: Lighting and lighting reflectors. Class 35: Retail services in relation to lighting; wholesale services in relation to lighting. 2. European Union trade mark application No 18 063 707 is rejected for all the contested goods and services. It may proceed for the remaining services. 3. The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 063 707 ‘ ’ (figurative mark), namely against all the goods and services in Classes 11, 35. The opposition is based on, inter alia, EUTM registration No 4 306 841, ‘NORMA’ (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.

 

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 EUTM registration No 4 306 841.

 

a) The goods and services

 

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

 

Class 35: Retailing and online retailing, in particular discount retailing, in the fields of lighting apparatus and equipment.

The contested goods and services are the following:

 

Class 11: Lighting and lighting reflectors.

Class 35: Retail services in relation to lighting; wholesale services in relation to lighting.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular, used in the opponent’s list of services, indicates that the specific service are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

 

Contested goods in Class 11

 

The contested lighting and lighting reflectors are similar to the opponent’s retailing and online retailing, in particular discount retailing, in the fields of lighting apparatus and equipment. Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary, since the goods sold at retail are identical to the goods of the other mark, and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

Contested services in Class 35

The contested retail services in relation to lighting are identically contained in both lists of services (albeit with a slightly different wording).

Wholesale services in relation to lighting are similar to retailing and online retailing, in particular discount retailing, in the fields of lighting apparatus and equipment. Although wholesale services and retail services target a different public, they have the same nature and purpose, since both are aimed at bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods. Furthermore, the subject of these services (the goods themselves) is the same and the public could take the view that a wholesaler also offers retail services relating to the same goods, and vice versa.

 

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 and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

 

The public’s degree of attentiveness may vary from average to high, depending on the price or terms and conditions of the goods and services purchased.

 c) The signs

 

NORMA
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 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Part of the public in the relevant territory, such as the English-speaking part of the public, will perceive the word ‘NORMA’ in the earlier mark as a female first name.

Moreover, even if the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04 ‘Respicur’, EU:T:2007:46, § 57). Therefore, the English-speaking part of the public will also perceive the above mentioned meaning in the verbal element ‘NORMAGRUP’ of the contested sign. This is particularly true considering that the letters ‘GRUP’ at the end are very close to the word ‘group’ in English and will therefore be associated to this concept.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Considering that the message conveyed by the word ‘NORMA’ that the signs have in common has no relation with the goods and services in question, this element is distinctive to a normal degree. Likewise, the letters NGT in the contested sign are distinctive because they do not convey any particular meaning.

As regards the element ‘grup’ of the contested sign, as explained above, it will be perceived as ‘group’. Since this indication is universally used in a commercial context to refer to the company, group or undertaking producing the goods, the relevant public will not pay much attention to this element and its distinctiveness is very low.

The figurative element at the beginning of the contested sign has no particular meaning for the relevant public and is, therefore, distinctive. Nevertheless, 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).

 

The contested sign has no element that could be considered clearly more dominant than other elements. 

 

Visually and aurally, the signs coincide in the verbal element ‘NORMA’. They differ in the verbal element ‘GRUP’ of the contested sign that has a very low distinctive character and in the letters ‘NGT’. Visually, the signs also differ in the figurative element, the colours and the relatively standard typeface of the contested sign. The impact of these visual elements on consumers is reduced for the reasons given above; moreover, they are not of a nature to prevent the public from immediately grasping the words being reproduced.

 

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

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, and taking into account both that the concept conveyed by the element ‘GRUP’ in the contested sign has limited importance and that the figurative element does not convey any particular concept, the signs are conceptually highly 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 services 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

 

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

Furthermore, 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). Moreover, 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.

In the present case, the goods and services are identical and similar and they are addressed to a public that will display a degree of attention that runs from average to high. The distinctiveness of the earlier mark is normal. The signs are visually similar to a degree below average, aurally similar to an average degree and conceptually highly similar.

The similarities between the signs are due to the fact that the earlier mark is entirely reproduced in the contested sign as a distinctive element. Whilst it is true that the public generally pays greater attention to the beginning of a mark than to the end, that is not true in all situations and cannot, in any event, undermine the principle that an analysis of the similarity of two trade marks must take into account the overall impression given by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. In the present case, and as already outlined above, the figurative element at the beginning of the contested sign will have little impact on consumers. As far as the letters ‘NGT’ are concerned, even if their distinctive character is also normal, they are not capable on their own to eclipse the following verbal element ‘NORMA’ that is equally distinctive. Indeed, the impact of this element in the contested sign cannot be disregarded in the overall impression created by the composite mark. Consequently, the differences are not enough to safely exclude a likelihood of confusion on the part of the public.

Indeed, account must be taken of the fact that 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, it is highly conceivable that the relevant consumer, even when the degree of attention is high, 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 and services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

According to the notification of the office dated 03/04/2020, the applicant had until 08/06/2020 to submit observations in reply to the notice of opposition. On 24/06/2020, after the deadline, the applicant submitted observations. As it does not cause any prejudice to the opponent, the Opposition Division will reply to the following arguments raised by the applicant.

The applicant claims to have earlier Spanish trade marks which were filed before the opponent’s trade mark. In this regard, however, it must be stressed that the right to a EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

The applicant also claims that ‘Normagrup’ is its company name. However, this is irrelevant as regards opposition proceedings since the contested sign has been applied for . Therefore, the evaluation of the existence of a risk of confusion must be done with regard to this sign.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

 

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 4 306 841. It follows that the contested trade mark must be rejected for all the contested goods and services.

 

As this earlier right 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).

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.

 

 

 

The Opposition Division

 

Sofia Modesta SACRISTÁN MARTÍNEZ

Sandra IBAÑEZ

Tzvetelina IANTCHEVA

 

 

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.