OPPOSITION Nо B 3 125 719

 

Beckberg GmbH, Wertachstr. 29-33, 90451 Nürnberg, Germany (opponent), represented by Blaum Dettmers Rabstein Rechtsanwaltspartnerschaft mbB, Vorsetzen 50, 20459 Hamburg, Germany (professional representative) 

 

a g a i n s t

 

Kanlux S.A., Objazdowa 1-3, 41-922 Radzionków, Poland (applicant), represented by Łukasz Korga, Al. Wojciecha Korfantego 125a/216, 40-156 Katowice, Poland (professional representative).

On 25/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 125 719 is rejected in its entirety.
2.	The opponent bears the costs, fixed at EUR 300.

REASONS

 

On 07/07/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 219 714 gettberg (word mark), namely against some of the goods and services in Classes 9, 11, 35. The opposition is based on German trade mark registration No 302 017 106 509, beckberg (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.

a) The goods and services

 

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

Class 9: Lamps, in particular vessel position lamps, flash light; Lamps for scientific purposes; batteries; rechargeable batteries; Chargers; Lamps, namely signal lamps, film, TV, video, beamer and photo lamps, light emitting diodes; Ballasts, ignitors and starters for lighting devices; Light accessories, namely, power rails, power factor correction capacitors, cables and insulated, massive and preassembled cables; Lighting control systems; illuminated signs.

Class 11: Lighting equipment

Class 35: wholesale and retail services related to the following goods in the selling rooms, catalogs and electronic media: lighting, devices

The contested goods and services are the following:

 

Class 9: Lighting control apparatus.

Class 11: Light sources [other than for photographic or medical use]; Luminaires; Lighting fixtures for household use; Industrial lighting fixtures; Lighting fixtures for commercial use; LED lighting fixtures; Electric lamps; Outdoor electrical lighting fixtures; Architectural lighting fixtures; Indoor electrical lighting fixtures; Halogen luminaires; Lamp holders; Lamp globes; Lamp chimneys.

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

Contested goods in Class 9

 

The contested lighting control apparatus and the opponent’s lighting control systems are identically contained in both lists of goods (including synonyms).

Contested goods in Class 11

The contested Light sources [other than for photographic or medical use]; Luminaires; Lighting fixtures for household use; Industrial lighting fixtures; Lighting fixtures for commercial use; LED lighting fixtures; Electric lamps; Outdoor electrical lighting fixtures; Architectural lighting fixtures; Indoor electrical lighting fixtures; Halogen luminaires; Lamp holders; Lamp globes; Lamp chimneys are included in the broad category of, or overlap with, the opponent’s lighting equipment. Therefore, they are identical.

Contested services in Class 35

The contested retail services in relation to lighting; Wholesale services in relation to lighting include, as broader categories the opponent’s wholesale and retail services related to the following goods in the selling rooms, catalogs and electronic media: lighting, devices. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s goods.

 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 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 high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

 

beckberg	gettberg
Earlier trade mark	Contested sign

 

The relevant territory is Germany.

 

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).

They signs consist of the words ‘beckberg’ and ‘gettberg’. Although these words do not exist as such in German language, the common suffix ‘-BERG’ would be naturally associated by the relevant German consumer with a reference to the concept of ‘mountain’ since it is commonly used in German language as part of composite terms for places or cities located near a mountain (for example, and to name just a few, the cities of Abensberg, Abenberg, .Amberg; Eisenberg; Heidelberg; Münchberg; Müncheberg; Nürnberg; Rheinberg; Rheinsberg; Winterber or Wittenberg). ‘-BERG’ is also traditionally used in Germany to create family names. In fact, nowadays there are frequently used names in Germany such as Blumenberg; Dusenberg; Führenberg; Herzberg; Stahlberg; Schönberg or Sonnenberg.

Therefore, it is considered that the German public is used to be confronted with many terms ending with ‘BERG’ and that for that reason it would naturally focus on the other elements of the words containing this ending whether they identify places or names.

In the absence of any known city at the confronted sign, the words as a whole would be associated with two different surnames. They are distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the sequence of letters ‘*E**BERG’ as well as in the number of letters of each word, i.e. eight.

Having said that, the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121).

The signs differ in their initial letters ‘B’ and ‘G’ as well as in the third and fourth letters, i.e. ‘CK’ and ‘TT’ respectively. Considering that the first letters of the signs are different; that the other diverging letters are not visually similar and that consumers generally focus more on the beginning of a sign, it is concluded that the signs are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the final syllable ‘BERG’ and differs in the first syllables ‘BECK’ and ‘GETT’. These syllables only coincide in the middle vowel ‘E’, yet differ in all the rest. Therefore, it is not only the first sound of this syllable that differs (B and G) but also the final sound (CK and TT).

Therefore, the signs are phonetically similar to a below average degree.

Conceptually, neither of the signs has as a whole a meaning for the public in the relevant territory as they would be perceived as two different surnames with a reference to an idea which is commonly used in Germany in the building of family names (-BERG). Therefore, they are conceptually similar 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.

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 and 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

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).

The goods and services are identical. The earlier mark has an average degree of distinctiveness, The relevant public is the public at large and business customers with specific professional knowledge or expertise whose degree of attention may vary from average to high.

The signs are overall similar to a below average degree visually and aurally. Conceptually the signs are lowly similar.

The relevant public is confronted regularly with composite words that include the common part ‘-BERG’ as a suffix and it is accustomed to differentiate family names and geographical terms by their different beginning. This corroborates that in this case the differences appearing at the first part of both signs would be naturally identified by the German consumer.

Therefore, notwithstanding the principles of interdependence and imperfect recollection, the Opposition Division considers that, in the context of a global appreciation, the differences between the trade marks in conflict take precedence over the similarities demonstrated and are such that they prevent a likelihood of confusion between the trade marks, in spite of the identity of the goods and services in question.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

 

 

Saida CRABBE

Julia GARCÍA MURILLO

Helen Louise MOSBACK

 

 

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.