OPPOSITION Nо B 3 106 037

Kerry Luxembourg S.à.r.l., 17 rue Antoine Jans, 1820 Luxembourg, Luxembourg (opponent), represented by FRKelly, 27 Clyde Road, Ballsbridge, Dublin 4, Ireland (professional representative)

a g a i n s t

Margarita Garcia Dominguez, Santiago De Chile 16 – 3 A, 15706 Santiago de Compostela, A Coruña, Spain (applicant).

On 18/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 106 037 is partially upheld, namely for the following contested goods:

Class 30: Coffee, teas and substitutes therefor; chocolates; coffee bags; tea bags; tea bags (non-medicated -); cocoa products; cocoa for use in making beverages; coffee; chocolate coffee; iced coffee; espresso; instant coffee; freeze-dried coffee; cappuccino; coffee pods; coffee capsules, filled; chocolate; milk chocolates; dairy-free chocolate; coffee concentrates; coffee essences; tea essences; coffee extracts; chicory extracts for use as substitutes for coffee; extracts of cocoa for use as flavours in beverages; chocolate extracts; chocolate extracts for the preparation of beverages; frappes; filters in the form of paper bags filled with coffee; herbal infusions; infusions, not medicinal; kombucha; mate [tea]; tea mixtures; tea mix powders; iced tea mix powders; aromatic preparations for making non-medicated infusions; aromatic preparations for making non-medicated tisanes; cocoa preparations for use in making beverages; chocolate drink preparations; chocolate drink preparations flavoured with mint; chocolate drink preparations flavoured with mocha; chocolate drink preparations flavoured with orange; chocolate drink preparations flavoured with nuts; chocolate drink preparations flavoured with banana; chocolate drink preparations flavoured with toffee; chocolate flavoured beverage making preparations; powdered preparations containing cocoa for use in making beverages; preparations for making beverages [tea based]; preparations for making beverages [cocoa based]; preparations for making beverages [coffee based]; preparations for making beverages [chocolate based]; chocolate syrups for the preparation of chocolate based beverages; tea; tea (non-medicated -) sold loose; white tea; instant white tea; chai tea; Chinese matrimony vine tea (gugijacha); fruit flavoured tea [other than medicinal]; apple flavoured tea [other than for medicinal use]; orange flavoured tea [other than for medicinal use]; darjeeling tea; acanthopanax tea (ogapicha); Asian apricot tea (maesilcha); roasted brown rice tea; roasted barley tea [mugicha]; ginseng tea; ginseng tea [insamcha]; red ginseng tea; barley-leaf tea; jasmine tea; tieguanyin tea; lime tea; oolong tea; tea of salty kelp powder (kombu-cha); tea of parched powder of barley with husk (mugi-cha); buckwheat tea; earl grey tea; packaged tea [other than for medicinal use]; fermented tea; iced tea; iced tea (non-medicated -); instant tea; black tea; instant green tea; Japanese green tea; theine-free tea sweetened with sweeteners; rooibos tea; tea for infusions; foods with a cocoa base; foodstuffs containing chocolate [as the main constituent]; almonds covered in chocolate; chocolate flavourings; snack foods consisting principally of confectionery; wafered pralines; chocolate waffles; chocolate coated nougat bars; viennoiserie; chocolate flavoured confectionery; non-medicated confectionery in the shape of eggs; non-medicated confectionery containing chocolate; chocolate creams; frozen confections on a stick; chocolate vermicelli; chocolate fondue; chocolate coated fruits; chocolate-coated nuts; cheese-flavored biscuits; salt crackers; confectionery chips for baking; chocolate marzipan; chocolate mousses; mousse confections; dessert mousses [confectionery]; chocolate desserts; tablet (confectionary); nougat; sugars, natural sweeteners, sweet coatings and fillings; salts, seasonings, flavourings and condiments; processed grains, starches, and goods made thereof, baking preparations and yeasts.

Class 32: Non-alcoholic preparations for making beverages.

2. European Union trade mark application No 18 127 802 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 127 802 for the word mark ‘lukas’, namely against all the goods in Classes 30 and 32. The opposition is based on, inter alia, European Union trade mark registration No 191 056 for the word mark ‘LUCAS’. 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 No 191 056.

a) The goods

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

Class 29: Preparations made from sausages for use as stuffings; mixes included in Class 29 for making burgers; textured soya proteins for food for human consumption; prepared soya beans and gelatine, all for food; canned meats for food for human consumption; gravy and gravy mixes.

Class 30: Cereals and preparations made from cereals, all for food for human consumption; spices (other than poultry spice) seasonings and flavourings, none being essential oils; flour, bread crumbs; stuffings consisting principally of cereal products for poultry, fish, meat or for game; prepared mixes for making pies, burgers and for making batters, all included in Class 30; bread rusks, dried culinary herbs; gravy and gravy mixes.

The contested goods are the following:

Class 30: Coffee, teas and cocoa and substitutes therefor; chocolates; prepared cocoa and cocoa-based beverages; chocolate-based beverages; cocoa-based beverages; coffee-based beverages; coffee-based beverage containing milk; coffee-based beverages containing ice cream (affogato); chocolate food beverages not being dairy-based or vegetable based; drinks in powder form containing cocoa; aerated beverages [with coffee, cocoa or chocolate base]; chocolate-based beverages with milk; coffee bags; tea bags; tea bags (non-medicated -); cocoa; cocoa products; cocoa [roasted, powdered, granulated, or in drinks]; cocoa beverages with milk; cocoa powder; cocoa for use in making beverages; coffee; chocolate coffee; iced coffee; espresso; instant coffee; freeze-dried coffee; cappuccino; coffee pods; coffee capsules, filled; chocolate; hot chocolate; milk chocolates; chocolate beverages with milk; chocolate powder; dairy-free chocolate; coffee concentrates; coffee essences; tea essences; coffee extracts; chicory extracts for use as substitutes for coffee; extracts of cocoa for use as flavours in beverages; chocolate extracts; chocolate extracts for the preparation of beverages; frappes; filters in the form of paper bags filled with coffee; herbal infusions; infusions, not medicinal; kombucha; mate [tea]; cocoa mixes; tea mixtures; tea mix powders; iced tea mix powders; drinking cocoa paste; instant cocoa powder; aromatic preparations for making non-medicated infusions; aromatic preparations for making non-medicated tisanes; cocoa preparations for use in making beverages; chocolate drink preparations; chocolate drink preparations flavoured with mint; chocolate drink preparations flavoured with mocha; chocolate drink preparations flavoured with orange; chocolate drink preparations flavoured with nuts; chocolate drink preparations flavoured with banana; chocolate drink preparations flavoured with toffee; chocolate flavoured beverage making preparations; preparations based on cocoa; powdered preparations containing cocoa for use in making beverages; preparations for making beverages [tea based]; preparations for making beverages [cocoa based]; preparations for making beverages [coffee based]; preparations for making beverages [chocolate based]; chocolate syrups for the preparation of chocolate based beverages; tea; tea (non-medicated -) sold loose; white tea; instant white tea; chai tea; Chinese matrimony vine tea (gugijacha); fruit flavoured tea [other than medicinal]; apple flavoured tea [other than for medicinal use]; orange flavoured tea [other than for medicinal use]; darjeeling tea; acanthopanax tea (ogapicha); Asian apricot tea (maesilcha); roasted brown rice tea; roasted barley tea [mugicha]; ginseng tea; ginseng tea [insamcha]; red ginseng tea; barley-leaf tea; jasmine tea; tieguanyin tea; lime tea; oolong tea; tea of salty kelp powder (kombu-cha); tea of parched powder of barley with husk (mugi-cha); buckwheat tea; earl grey tea; packaged tea [other than for medicinal use]; fermented tea; iced tea; iced tea (non-medicated -); instant tea; black tea; instant green tea; Japanese green tea; theine-free tea sweetened with sweeteners; rooibos tea; tea for infusions; foods with a cocoa base; foodstuffs containing chocolate [as the main constituent]; almonds covered in chocolate; chocolate flavourings; snack foods consisting principally of confectionery; wafered pralines; chocolate waffles; chocolate coated nougat bars; viennoiserie; chocolate flavoured confectionery; non-medicated confectionery in the shape of eggs; non-medicated confectionery containing chocolate; chocolate creams; frozen confections on a stick; chocolate vermicelli; chocolate fondue; chocolate coated fruits; chocolate-coated nuts; cheese-flavored biscuits; salt crackers; confectionery chips for baking; chocolate marzipan; chocolate mousses; mousse confections; dessert mousses [confectionery]; custards [baked desserts]; chocolate desserts; tablet (confectionary); nougat; sugars, natural sweeteners, sweet coatings and fillings, bee products; salts, seasonings, flavourings and condiments; processed grains, starches, and goods made thereof, baking preparations and yeasts; ice, ice creams, frozen yogurts and sorbets.

Class 32: Non-alcoholic beverages; non-alcoholic preparations for making beverages; waters; nut and soy based beverages; flavoured carbonated beverages; juices; vitamin enriched sparkling water [beverages]; lemon barley water; orange barley water; quinine water.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 30

The contested seasonings and flavourings includes, as a broader category, the opponent’s seasonings and flavourings, none being essential oils. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested chocolate flavourings are included in the broad category of, or overlap with, the opponent’s flavourings, none being essential oils. Therefore, they are identical.

The contested salts are included in the broad category of, or overlap with, the opponent’s seasonings, none being essential oils. Therefore, they are identical.

The contested cheese-flavored biscuits; salt crackers; goods made thereof [processed grains, starches] are included in the broad category of, or overlap with, the opponent’s preparations made from cereals, all for food for human consumption. Therefore, they are identical.

The contested processed grains are similar to the opponent’s preparations made from cereals, all for food for human consumption because they have the same nature and usually coincide in producer and relevant public.

The contested starches, baking preparations and yeasts are similar to the opponent’s flour as they usually coincide in producer, relevant public and distribution channels.

The contested condiments are similar to the opponent’s seasonings, none being essential oils as they usually coincide in producer, relevant public and distribution channels.

The contested sugars, natural sweeteners are sweet substances used to make food taste sweet. While certain types of flavourings (e.g. artificial flavourings) may be preferred by professionals and sugar will be used by all consumers, this does not change the fact that these goods target both relevant publics. Therefore, these contested goods are similar to the opponent’s flavourings, none being essential oils as they have the same purpose. They usually coincide in relevant public, distribution channels and method of use.

The contested cocoa for use in making beverages; coffee concentrates; coffee essences; tea essences; coffee extracts; chicory extracts for use as substitutes for coffee; extracts of cocoa for use as flavours in beverages; chocolate extracts; chocolate extracts for the preparation of beverages; aromatic preparations for making non-medicated infusions; aromatic preparations for making non-medicated tisanes; cocoa preparations for use in making beverages; chocolate drink preparations; chocolate drink preparations flavoured with mint; chocolate drink preparations flavoured with mocha; chocolate drink preparations flavoured with orange; chocolate drink preparations flavoured with nuts; chocolate drink preparations flavoured with banana; chocolate drink preparations flavoured with toffee; chocolate flavoured beverage making preparations; powdered preparations containing cocoa for use in making beverages; preparations for making beverages [tea based]; preparations for making beverages [cocoa based]; preparations for making beverages [coffee based]; preparations for making beverages [chocolate based]; chocolate syrups for the preparation of chocolate based beverages are similar at least to a low degree to the opponent’s flavourings, none being essential oils. They serve the same purpose (introducing a new flavour or aroma into drinks or foodstuffs by altering or modifying the original flavour or aroma) or can be used in the production process of foodstuffs or beverages to give them a required flavour or aroma. Furthermore, they have the same methods of use and might coincide in producer, distribution channels and relevant public.

The contested chocolates; cocoa products; chocolate; milk chocolates; dairy-free chocolate; foods with a cocoa base; foodstuffs containing chocolate [as the main constituent]; almonds covered in chocolate; snack foods consisting principally of confectionery; wafered pralines; chocolate waffles; chocolate coated nougat bars; viennoiserie; chocolate flavoured confectionery; non-medicated confectionery in the shape of eggs; non-medicated confectionery containing chocolate; chocolate creams; frozen confections on a stick; chocolate vermicelli; chocolate fondue; chocolate coated fruits; chocolate-coated nuts; confectionery chips for baking; chocolate marzipan; chocolate mousses; mousse confections; dessert mousses [confectionery]; chocolate desserts; tablet (confectionary); nougat; sweet coatings and fillings are similar at least to a low degree to the opponent’s preparations made from cereals, all for food for human consumption as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, some of them are in competition.

The contested coffee, teas and substitutes therefor; coffee bags; tea bags; tea bags (non-medicated -); coffee; chocolate coffee; iced coffee; espresso; instant coffee; freeze-dried coffee; cappuccino; coffee pods; coffee capsules, filled; frappes; filters in the form of paper bags filled with coffee; herbal infusions; infusions, not medicinal; kombucha; mate [tea]; tea mixtures; tea mix powders; iced tea mix powders; tea; tea (non-medicated -) sold loose; white tea; instant white tea; chai tea; Chinese matrimony vine tea (gugijacha); fruit flavoured tea [other than medicinal]; apple flavoured tea [other than for medicinal use]; orange flavoured tea [other than for medicinal use]; darjeeling tea; acanthopanax tea (ogapicha); Asian apricot tea (maesilcha); roasted brown rice tea; roasted barley tea [mugicha]; ginseng tea; ginseng tea [insamcha]; red ginseng tea; barley-leaf tea; jasmine tea; tieguanyin tea; lime tea; oolong tea; tea of salty kelp powder (kombu-cha); tea of parched powder of barley with husk (mugi-cha); buckwheat tea; earl grey tea; packaged tea [other than for medicinal use]; fermented tea; iced tea; iced tea (non-medicated -); instant tea; black tea; instant green tea; Japanese green tea; theine-free tea sweetened with sweeteners; rooibos tea; tea for infusions have some relevant factors in common with the opponent’s flavourings, none being essential oils since the latter may include coffee or tea flavourings, which are used to give a coffee/tea flavour to other foodstuffs or beverages. These goods may, therefore, have the same purpose and method of use, and are considered similar to a low degree.

However, the same does not apply to the contested cocoa and substitutes therefor; prepared cocoa and cocoa-based beverages; chocolate-based beverages; cocoa-based beverages; coffee-based beverages; coffee-based beverage containing milk; coffee-based beverages containing ice cream (affogato); chocolate food beverages not being dairy-based or vegetable based; drinks in powder form containing cocoa; aerated beverages [with coffee, cocoa or chocolate base]; chocolate-based beverages with milk; cocoa; cocoa [roasted, powdered, granulated, or in drinks]; cocoa beverages with milk; cocoa powder; chocolate beverages with milk; chocolate powder; hot chocolate; cocoa mixes; drinking cocoa paste; instant cocoa powder; preparations based on cocoa. These contested goods are not sufficiently close to the opponent’s goods in Classes 29 and 30 to find them similar. In particular, the contested cocoa and substitutes therefor; cocoa; cocoa [roasted, powdered, granulated, or in drinks]; cocoa powder; chocolate powder; cocoa mixes; instant cocoa powder; preparations based on cocoa are ingredients. Ingredients used for the preparation of foodstuffs and beverages are a subcategory of raw materials. The mere fact that one ingredient is needed for the preparation of a foodstuff or a beverage (i.e. the opponent’s preparations made from cereals, all for food for human consumption) will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs or beverages (26/10/2011, T‑72/10, Naty's, EU:T:2011:635, § 35‑36). These goods have different commercial origins, serve specific purposes and, in principle, mainly target companies operating in the food and beverage industry, which is a specialised and different relevant public. In addition, the abovementioned contested beverages (cocoa beverages with milk; prepared cocoa and cocoa-based beverages; chocolate-based beverages; cocoa-based beverages; coffee-based beverages; coffee-based beverage containing milk; coffee-based beverages containing ice cream (affogato); chocolate food beverages not being dairy-based or vegetable based; drinks in powder form containing cocoa; aerated beverages [with coffee, cocoa or chocolate base]; chocolate-based beverages with milk; cocoa beverages with milk; chocolate beverages with milk; hot chocolate; drinking cocoa paste) are ready-made drinks suitable for immediate consumption by end consumers, unlike the opponent’s flavourings, none being essential oils, which are not intended for immediate consumption. This is because they are very specific products that first have to be added to a liquid – possibly by the beverage manufacturer – before it can be drunk. These contested goods are sold through different outlets or are found in different sections in supermarkets. In addition, they are of a different nature, and it is not common on the market for them to be manufactured by the same undertakings. Furthermore, the goods are not complementary. Some of these contested goods, such as cocoa-based beverages, can be used together with some of the opponent’s goods, such as preparations made from cereals in Class 30. However, this is not sufficient to find them similar and cannot offset their completely different nature or the fact that they normally originate from different companies. Complementarity has to be clearly distinguished from use in combination, where goods are merely used together, whether by choice or for convenience. Goods are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). This is not the case here. Therefore, taking into account all the relevant factors and their significance, all the contested goods listed in this paragraph are dissimilar to all the opponent’s goods.

The contested custards [baked desserts]; bee products; ice, ice creams, frozen yogurts and sorbets have a different nature from the opponent’s goods in Classes 29 and 30. They are not usually manufactured by the same producers and are not complementary. Although they may target the same public, this is insufficient to find any degree of similarity. In addition, the fact that these contested goods can be used in conjunction with, or as an ingredient of, the opponent’s goods is not in itself sufficient to find them similar. Therefore, they are dissimilar.

Contested goods in Class 32

The opponent’s flavourings, none being essential oils in Class 30 can be used to give new flavours or aromas to beverages. Therefore, these goods and the contested non-alcoholic preparations for making beverages in Class 32 can be used in the production process of beverages to give them a required flavour or aroma, and have the same methods of use. Furthermore, they might have the same producer and target the same relevant public. Therefore, they are similar.

By contrast, the remaining contested non-alcoholic beverages; waters; nut and soy based beverages; flavoured carbonated beverages; juices; vitamin enriched sparkling water [beverages]; lemon barley water; orange barley water; quinine water have a different nature from the opponent’s goods in Classes 29 and 30. Furthermore, these goods are neither complementary nor in competition. The fact that some of them can be consumed together is not sufficient to establish complementarity. Furthermore, their producers and methods of use are different. In supermarkets or other shops, they are sold in different areas. Consumers will not assume that these goods come from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

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 to varying degrees are directed at the public at large. The degree of attention is considered average.

c) The signs

LUCAS	lukas
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.

A significant part of the relevant public will perceive the element ‘LUCAS’ of the earlier mark and the element ‘lukas’ of the contested sign as two spelling variations of the same male forename. Although in some countries, such as Spain, the typical spelling of this name is ‘Lucas’, it is becoming more common that Spanish people also use foreign equivalents of names (e.g. Esther instead of Ester). Therefore, although the name ‘Lukas’ is fairly uncommon in part of the relevant territory, the relevant public is likely to perceive it as a foreign version of the male forename ‘Lucas’. Both elements are considered distinctive, as they have no relation to the relevant goods.

The Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will perceive the signs as a male forename.

Both signs are word marks and it is the word as such that is protected. Therefore, it is irrelevant that the earlier mark is written in upper-case letters and the contested mark is in lower-case letters.

Visually, the signs coincide in the sequence of letters ‘LU*AS’ and differ in their middle letter ‘C’ (earlier mark) versus ‘K’ (contested sign).

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘LU*AS’ present identically in both signs. In some of the relevant languages, the differing letters ‘C’ (followed by ‘A’) and ‘K’ are pronounced identically. In other parts of the relevant territory, the differing letters ‘C’ (earlier mark) and ‘K’ (contested sign) might produce different sounds. Since the signs are mere variations of the same male forename, however, it is highly likely that this part of the relevant public pronounces them identically. Therefore, the signs are aurally highly similar, if not identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Despite the difference in the spellings, both signs will be associated with a male forename. Therefore, the signs are conceptually identical.

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

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).

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.

Account is 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).

The goods are partly identical, partly similar to varying degrees and partly dissimilar. As identity or similarity of goods is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at the dissimilar goods cannot be successful.

The goods found to be identical or similar to varying degrees target the general public, whose degree of attention is average. The distinctiveness of the earlier mark is normal.

The signs are visually similar to a high degree, aurally highly similar, if not identical, and conceptually identical, as they are two different spellings of the same male forename. The difference resulting from the middle letters ‘C’/‘K’ of the signs, which are not short, is not sufficient to outweigh the abovementioned similarity.

Therefore, it is highly conceivable that the relevant public, who will have to rely on its imperfect recollection of the signs, could confuse the signs or believe that the identical or similar goods originate from the same or economically linked undertakings, even with respect to the goods found to be similar to only a low degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that will perceive the signs as a male forename. It is sufficient if a significant part of the relevant public may be confused as to the origin of the goods at issue. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

The opponent has also based its opposition on the following earlier trade marks:

1. EUTM No 17 891 014 for the figurative mark ,

2. UK trade mark registration No 1 203 760 for the word mark ‘LUCAS’,

3. UK trade mark registration No 3 305 821 for the figurative mark ,

4. UK trade mark registration No 1 211 561 for the word mark ‘LUCAS’ for the following goods:

Class 1: Curing substances, phosphates, gelatine, preservatives, antioxidants, all being chemical products for use with foodstuffs and for use in industry; all included in Class 1; but not including chemicals for use in engineering, the automotive and aerospace industries or for use in metal treatment.

Since earlier marks 1-3 cover the same scope of goods as the earlier mark examined above, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

Earlier mark 4 covers goods in Class 1 (listed above) that are clearly different to those for which the opposition has already been rejected. This is because the opponent’s goods are raw chemical compounds used in the food industry, whereas the contested goods are finished products ready for immediate consumption. Therefore, their nature is different. The fact that the opponent’s goods may be used for the manufacture of the contested goods is not in itself sufficient to find that the goods in question are similar, as their natures, purposes, methods of use and relevant publics are quite distinct. Raw materials, such as the opponent’s goods in Class 1, are intended for use in industry rather than being offered in their respective outlets for direct purchase by the final consumer, as is the case for the contested goods. These goods target a different market and are usually manufactured by different companies. Therefore, the goods in question are dissimilar. It follows that the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Beatrix STELTER

Lidiya NIKOLOVA

Karin KLÜPFEL

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.