OPPOSITION Nо B 3 121 362

 

C. Josef Lamy GmbH, Grenzhöfer Weg 32, 69123 Heidelberg, Germany (opponent), represented by Gleiss Lutz Hootz Hirsch PartmbB Rechtsanwälte, Steuerberater, Lautenschlagerstraße 21, 70173 Stuttgart, Germany (professional representative) 

 

a g a i n s t

 

Wuxi Mipai International Trade Co., Ltd., No. 300 Youyi North Road, Xishan Economic and Technological Development Zone, 214100 Wuxi City, People’s Republic of China (applicant), represented by IPside, 6 Impasse Michel Labrousse, 31100 Toulouse, France (professional representative).

On 18/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 121 362 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 211 018 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 19/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 211 018, ‘Lamy’ (word mark). The opposition is based on, inter alia, international trade mark registration designating the European Union No 1 047 896, ‘Lamy’ (word mark). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration designating the European Union No 1 047 896, ‘Lamy’ (word mark).

 

a) The goods

 

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

 

Class 9: Apparatus for recording, transmission or reproduction of sound or images.

The contested goods are the following:

Class 15: Harmonicas; accordions; flutes; pianos; guitars; violins; bandonions; clarionets; banjos; electronic organs.

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.

The contested harmonicas; accordions; flutes; pianos; guitars; violins; bandonions; clarionets; banjos; electronic organs are similar to a low degree to the opponent’s apparatus for recording, transmission or reproduction of sound or images. The contested goods are various types of musical instruments and the opponent’s goods are various audiovisual apparatus, which include, inter alia, sound amplifiers, and which can be used with all the musical instruments above, being even essential to the use of some musical instruments such as electric guitars, and therefore complementary. Furthermore, they usually coincide in relevant public and distribution channels.

b) The signs

 

Lamy	Lamy
Earlier trade mark	Contested sign

 

The signs are identical.

 

c) Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The goods are similar to a low degree and the signs are identical.

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).

Considering all the above, especially the interdependence rule and the fact that the signs are identical (what counterbalances the low degree of similarity between the goods), there is a likelihood of confusion on the part of the public.

 

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 047 896, ‘Lamy’. It follows that the contested trade mark must be rejected for all the contested goods.

 

As the signs are identical, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

As the earlier right, namely international trade mark registration designating the European Union No 1 047 896, ‘Lamy’, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

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 ground of the opposition, namely Article 8(5) 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

 

Helen Louise MOSBACK

Michal KRUK

Saida CRABBE

 

 

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.