OPPOSITION No B 2 865 692

Concierge, 86 avenue de la République, 59113 Seclin, France (opponent), represented by SCP Bignon Lebray Avocats, 4 rue des Canonniers, 59041 Lille Cedex, France (professional representative)

a g a i n s t

LG Electronics Inc., 128, Yeoui-daero, Yeongdeungpo-gu, 150-721 Seoul, Republic of Korea (applicant), represented by Mitscherlich Patent- und Rechtsanwälte PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative)

On 10/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 865 692 is partially upheld, namely for all the contested goods, except the following:

Class 11: Humidifiers; electric dehumidifier for household use; water purifiers for household purposes; water ionizers for household purposes; water ionizers; membrane apparatus in the nature of filters for purifying water; solar thermal collectors [heating]; air purifiers; precision filters for water treating; water desalination plants; purification installations for sewage; purification installations for wastewater reclamation and reusing system; wastewater purifying and treatment apparatus; filters for wastewater; water purifiers for industry; street lamps.

2. European Union trade mark application No 16 127 722 is rejected for all the contested goods, except the ones listed above, in relation to which it may proceed.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 127 722 for the word mark ‘Concierger’. The opposition is based on European Union trade mark registration No 14 696 231 .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

The opposition was initially based on part of the goods and services covered by the opponent’s Classes 7, 11, 20, 37 and 40. After a limitation of the earlier mark, the opposition is based on the following:

Class 7: Machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; agricultural machines; suction machines for industrial purposes; industrial handling machines, packaging or packing machines; pumps i(machines); sewing and knitting machines; ironing machines; washing machines; kitchen machines, electric; robots (machines).

Class 11: Pocket searchlights; lighting apparatus for vehicles; heating or air conditioning installations for vehicles.

Class 40: Blowing.

The contested goods are the following:

Class 7: Electric clothes washing machines; automatic dishwashers; electric vacuum cleaners; clothes management machines for deodorizing, ironing and sterilizing clothes for household purpose; electric clothes managing apparatus for household purpose; hose for electric vacuum cleaners; bag for electric vacuum cleaners; stick type vacuum cleaners; robots; electric rotary blowers; compressed air pumps; rotary compressors; compressors for refrigerators; spin driers (not heated); electric mixers for household purposes; robotic vacuum cleaners; electric food processors; steam cleaners for household purposes; hand-held vacuum cleaners; electric vacuum cleaners for bedding.

Class 11: Air conditioners; hot air apparatus, namely, hot-air space heating apparatus; humidifiers; electric dehumidifier for household use; electric ranges; water purifiers for household purposes; water ionizers for household purposes; water ionizers; membrane apparatus in the nature of filters for purifying water; solar thermal collectors [heating]; air purifiers; heating apparatus; ventilation [air-conditioning] apparatus for heating; light emitting diode lighting; gas ranges; electric kitchen ovens; apparatus or installations for cooking; electric refrigerators; electric clothes dryers; ventilation apparatus; clothes management machines for drying clothes (electric) for household purpose; electric clothing management machines having the functions of deodorizing, sterilizing and steaming garments for household purposes; electric clothes drying machines with sterilization, deodorization and crease-resistant treatment functions for household purposes; precision filters for water treating; water desalination plants; purification installations for sewage; purification installations for wastewater reclamation and reusing system; wastewater purifying and treatment apparatus; filters for wastewater; water purifiers for industry; street lamps; incandescent lamps; fluorescent lamps; automobile lights; ventilators for automobiles; heaters for automobiles; electric wine cellar for household purposes.

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 ‘namely’, used in the applicant’s list of goods shows the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 7

The contested electric clothes washing machines; automatic dishwashers fall within the broad category of the opponent’s washing machines in the same class. They are therefore identical.

The contested clothes management machines for deodorizing, ironing and sterilizing clothes for household purpose; electric clothes managing apparatus for household purpose are meant to treat textile goods for household purposes. These overlap with at least one of the following goods of the opponent in Class 7: ironing machines; washing machines and are therefore identical.

The contested robots; robotic vacuum cleaners are identical to the opponent’s robots (machines), either because they are identically covered in both lists (including synonyms) or because the contested goods are included in the broad category of the opponent’s goods.

The contested compressed air pumps fall within the broad category of the opponent’s pumps i(machines) in the same class, and are therefore considered identical.

The contested electric mixers for household purposes; electric food processors fall within the broad category of the opponent’s kitchen machines, electric in the same class. Therefore, they are considered identical.

The contested hose for electric vacuum cleaners; bag for electric vacuum cleaners are similar to the opponent’s machine tools in Class 7, since they can be complementary, they can target the same consumers and can come from the same kind of undertakings.

The contested spin driers (not heated) are similar to the opponent’s washing machines in the same class, since they coincide in distribution channels/points of sale, can target the same consumers and are likely to come from the same kind of undertakings. Furthermore, these goods overlap in their global purpose of treating laundry.

The contested electric vacuum cleaners; stick type vacuum cleaners; hand-held vacuum cleaners; electric vacuum cleaners for bedding; steam cleaners for household purposes are at least similar to a low degree to the opponent’s ironing machines; washing machines, since they have the purpose of cleaning and maintaining household appliances. They are often produced by the same companies; those which offer all kinds of white goods. They are sold in large electronic stores to the public at large.

The rest of the contested goods in this class are similar to at least a low degree to the opponent’s machine tools in Class 7, since they can be complementary, can target the same consumers and may come from the same kind of undertakings.

Contested goods in Class 11

The contested air conditioners; hot air apparatus, namely, hot-air space heating apparatus; heating apparatus; ventilation [air-conditioning] apparatus for heating; ventilation apparatus; ventilators for automobiles; heaters for automobiles are identical to the opponent’s heating or air conditioning installations for vehicles in Class 11, either because they are contained in both lists (including synonyms), or because the opponent’s goods are included in, or overlap with, the contested goods.

The contested light emitting diode lighting; incandescent lamps; automobile lights are identical to the opponent’s lighting apparatus for vehicles, either because they overlap or because the same goods are referred to by using synonymous expressions.

The contested electric ranges; gas ranges are similar to the opponent’s kitchen machines, electric in Class 7, since they coincide in distribution channels/points of sale, can target the same consumers, and can originate from the same kind of undertakings.

The contested electric kitchen ovens; apparatus or installations for cooking are similar to the opponent’s kitchen machines, electric, since they can coincide in distribution channels/points of sale, can target the same consumers, and can come from the same kind of undertakings.

The contested fluorescent lamps are similar to at least a low degree to the opponent’s pocket searchlights, since they coincide in purpose, can coincide in distribution channels, and can originate from the same kind of undertakings.

The contested electric clothes dryers; clothes management machines for drying clothes (electric) for household purpose; electric clothing management machines having the functions of deodorizing, sterilizing and steaming garments for household purposes; electric clothes drying machines with sterilization, deodorization and crease-resistant treatment functions for household purposes are similar to at least a low degree to the opponent’s washing and ironing machines in Class 7, because they can coincide in distribution channels/points of sale, can target the same consumers, and can come from the same kind of undertakings.

The contested electric refrigerators; electric wine cellar for household purposes are frequently used for kitchen purposes, for instance to preserve certain foodstuffs/ingredients. These are similar to at least a low degree to the opponent’s kitchen machines, electric, since they can coincide in distribution channels/points of sale, can target the same consumers, and can come from the same kind of undertakings.

The rest of the contested goods in Class 11 are mostly purifiers, humidifiers, dehumidifiers and street lamps. They are dissimilar to the opponent’s goods, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers, and are not likely to come from the same kind of undertakings.

b) Relevant public — degree of attention

In the present case, the goods found to be identical or similar (to varying degrees) are directed at both, the public at large and professionals. The degree of attention paid during their purchase will vary from average to higher than average, the latter being more likely in relation to goods that, for instance, are not frequently purchased and/or are expensive (e.g. electric clothes washing machines; automatic dishwashers).

c) The signs

	Concierger
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.

The Opposition Division will focus on the part of the public for which the verbal elements in the signs are meaningless, who constitute a significant part of the relevant public (e.g. Spanish- and Bulgarian-speaking consumers), since this is considered to be the best-case scenario for likelihood of confusion to arise (i.e. no differing concepts between the signs, or concepts that could diminish the degree of distinctiveness of the verbal elements, as argued by the applicant).

The verbal elements of the marks are, for the part of the public referred to, meaningless and have an average degree of distinctiveness. The figurative element in the earlier mark is distinctive, since it consists of a combination of various elements positioned concentrically, with no particular concept. This assessment has not been disputed by the parties.

Consequently, in the signs under comparison, there are no elements that are more distinctive or dominant (visually eye-catching) than others.

However, 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). Therefore, despite the fact that the figurative element in the earlier mark is distinctive, it is considered to have less impact than the verbal element accompanying it, which consumers will use for referring to the mark

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. It is therefore relevant that the only difference between the verbal elements of the signs is found in the last letter of the contested mark (‘r’) which, being preceded by a long string of coinciding letters (i.e. the entire earlier mark) will have very little impact.

Visually and aurally, the signs coincide in the sequence of letters forming the entire earlier mark (and their sound), which constitutes almost the entire verbal element of the contested mark.

The marks differ in the last letter of the contested mark (and its sound), and also visually in the figurative element and slightly stylised typeface of the earlier mark. However, visually, the typeface is close to standard typeface, not being striking in its stylisation or colour, and the remaining differences referred to have a reduced impact, for the reasons explained above. Aurally, the differing ending ‘r’ is a soft sound, and it is preceded by a long sequence of coinciding letters. Therefore its impact is minimal.

The signs are visually and aurally similar to a high degree.

Conceptually, the only concepts found in the marks are those of the geometrical shapes forming the figurative element in the earlier mark. Since the contested mark will not be associated with any meaning, the signs are not conceptually 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 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 found to be identical or similar (to varying degrees) 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 goods and services compared are partly identical, partly similar (to varying degrees) and partly dissimilar. They are directed at both the public at large and professionals. The degree of attention paid during their purchase will vary from average to high.

The signs are visually and aurally highly similar and conceptually not similar. The earlier mark has an average degree of distinctiveness.

The only verbal elements in the marks (both with a normal degree of distinctiveness) consist of almost the exact same sequence of letters, with only one additional differing letter at the end of the contested mark, which has a minimal visual and aural impact, and also does not contribute to differentiating the signs conceptually. In addition, the remaining visual differences (i.e. the figurative element and the typeface of the earlier mark) are of reduced impact.

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). 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).

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). In this case, it is considered that the significant coincidences between the marks, together with the identity or similarity (to varying degrees) of part of the goods involved, are clearly enough to counteract the differences between the marks and to lead consumers to confusion as regards their commercial origin, at least in relation to those goods.

Considering all the above, there is a likelihood of confusion on the part of the public for which the verbal elements of the signs are meaningless, this being the best-case scenario for likelihood of confusion to occur (see section c) above). Given that a likelihood of confusion on the part of only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 14 696 231. It follows that the contested trade mark must be rejected for all the contested goods found to be identical or similar, including to a low degree, to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

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

Sofia SACRISTAN MARTINEZ

María del Carmen SUCH SANCHEZ

Manuela RUSEVA

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.