BELLOF | Decision 2726704
Date Published: Sep 28, 2017
OPPOSITION No B 2 726 704
Bellof Japan Co., Ltd., ACT Square 3F, No 30-11, Chitosedai 4-chome Setagaya-ku
Tokyo, Japan (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft MBB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)
a g a i n s t
Yang Xiaoli, No. 101, Building 8, Pingning Zhuang, Pinghu Garden, Liusha West Sub-District, Puning City, Guangdong Province, People's Republic of China (applicant), represented by Haseltine Lake LLP, Redcliff Quay 120 Redcliff Street, Bristol BS1 6HU, United Kingdom (professional representative).
On 11/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 726 704 is partially upheld, namely for the following contested goods:
Class 11: Lamps; lighting apparatus and installations; lamp casings; torches for lighting; light-emitting diodes [led] lighting apparatus; light bulbs; lighting installations for air vehicles; bicycle lights; automobile lights; anti-dazzle devices for automobiles [lamp fittings]; lighting apparatus for vehicles; germicidal lamps for purifying air.
Class 12: Electric vehicles; rearview mirrors; automobiles; engines for land vehicles; propulsion mechanisms for land vehicles; automobile bodies; shock absorbers for automobiles; sun-blinds adapted for automobiles; automobile wheels; reversing alarms for vehicles; trolleys; bicycles; brakes for vehicles; vehicle seats; upholstery for vehicles; spoilers for vehicles; non-skid devices for vehicle tires [tyres]; vehicle chassis; anti-dazzle devices for vehicles; headlight wipers.
2. European Union trade mark application No 15 232 721 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 15 232 721. The opposition is based on, inter alia, German trade mark registration No 39 919 260. 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 German trade mark registration No 39 919 260.
- The goods
The goods on which the opposition is based are the following:
Class 11: Lighting equipment, facilities and equipment for vehicles such as cars, motorcycles and bicycles, lamps, headlamps, extra lights and headlights, fog lights and headlight, discharge lamps with high-intensity lights and other electrical.
The contested goods are the following:
Class 11: Lamps; lighting apparatus and installations; lamp casings; torches for lighting; light-emitting diodes [led] lighting apparatus; light bulbs; lighting installations for air vehicles; bicycle lights; automobile lights; anti-dazzle devices for automobiles [lamp fittings]; water filtering apparatus; lighting apparatus for vehicles; germicidal lamps for purifying air; cooking apparatus and installations; cooling installations and machines; air conditioning apparatus; defrosters for vehicles; heating apparatus; pocket warmers; gas lighters.
Class 12: Electric vehicles; rearview mirrors; automobiles; engines for land vehicles; propulsion mechanisms for land vehicles; automobile bodies; shock absorbers for automobiles; sun-blinds adapted for automobiles; automobile wheels; reversing alarms for vehicles; trolleys; bicycles; brakes for vehicles; vehicle seats; upholstery for vehicles; spoilers for vehicles; non-skid devices for vehicle tires [tyres]; vehicle chassis; anti-dazzle devices for vehicles; headlight wipers.
Class 25: Clothing; trousers; skirts; underclothing; layettes [clothing]; swimsuits; swimming trunks; footwear; hats; hosiery; gloves [clothing]; neckties; scarfs; shirts; outer clothing; belts [clothing]; girdles; tee-shirts; sleep masks; wedding dresses.
An interpretation of the wording of the list of the opponent’s goods is required to determine the scope of protection of these goods.
The term ‘such as’, used in the opponent’s list of goods indicates that the specific goods 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 (see the judgment of 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 lamps are identically included in the opponent’s specification.
The contested lighting installations for air vehicles; bicycle lights; automobile lights; anti-dazzle devices for automobiles [lamp fittings] are included in the opponent’s broader category of lighting equipment, facilities and equipment for vehicles such as cars, motorcycles and bicycles. Therefore, they are considered identical.
The contested broader category of the applicant’s lighting apparatus for vehicles overlap with the opponent’s broader category of lighting equipment, facilities and equipment for vehicles such as cars, motorcycles and bicycles. These broad categories of goods cannot be clearly separated and are, therefore, considered identical.
The contested lighting apparatus and installations include as a broader category the opponent’s lighting equipment, facilities and equipment for vehicles such as cars, motorcycles and bicycles. 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 light-emitting diodes [led] lighting apparatus, light bulbs are included in or overlap with the opponent’s lighting equipment, facilities and equipment for vehicles such as cars, motorcycles and bicycles. These goods are considered identical.
The contested torches for lighting are identical to the opponent’s lighting facilities for vehicles because the contested goods are included in or overlap with the opponent’s goods.
The contested germicidal lamps for purifying air are included in the opponent’s broader category of lamps. Therefore, they are identical.
The contested lamp casings and the opponent’s lamps are complementary. They have the same distribution channels and target the same public. Moreover, they could originate from the same undertakings. Therefore, these goods are similar.
The remaining contested water filtering apparatus; cooking apparatus and installations; cooling installations and machines; air conditioning apparatus; defrosters for vehicles; heating apparatus; pocket warmers; gas lighters have a nature that is clearly different from the opponent’s goods in Class 11 that include lighting related equipment and facilities. The goods under comparison differ in purpose, and they are neither complementary nor in competition. In addition, they are normally produced by different undertakings. Considering the above, these goods are considered dissimilar to all the opponent’s goods.
Contested goods in Class 12
The contested electric vehicles; automobiles; trolleys; bicycles represent different types of vehicles and as such have a strong complementary link with the opponent’s lighting equipment, facilities and equipment for vehicles. As an essential part of vehicles, they are indispensable for the use of the applicant’s goods, they target the same end users and they may be sold in the same shops. These goods are considered similar.
The contested rearview mirrors; engines for land vehicles; propulsion mechanisms for land vehicles; automobile bodies; shock absorbers for automobiles; sun-blinds adapted for automobiles; automobile wheels; reversing alarms for vehicles; brakes for vehicles; vehicle seats; upholstery for vehicles; spoilers for vehicles; non-skid devices for vehicle tires [tyres]; vehicle chassis; anti-dazzle devices for vehicles; headlight wipers are similar to the opponent’s facilities and equipment for vehicles as their distribution channels, producers and end users coincide.
Contested goods in Class 25
All the contested goods in this class are considered dissimilar to the opponent’s goods in Class 11. They neither share the same commercial origin, nor the distribution channels and are also not directed at the same consumers.
- Relevant public — degree of attention
In the present case, the goods found to be identical or similar are directed at the public at large. The degree of attention may vary from average to high, considering that some of the goods in question, namely in Class 12, are not everyday purchases and usually involve considerable thought before purchase due to their connection with safety and their prices. Therefore, the degree of attention may vary from average to high.
- The signs
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).
The earlier mark is a figurative mark consisting of the verbal element ‘BELLOF’, written in the standard uppercase letters.
The contested sign is a figurative mark consisting of the verbal element ‘BELLOF’, written in bold, italic and slightly stylised script. The second letter ‘L’ has a slightly lower position in comparison to the rest of the letters composing the sign.
As regards the figurative elements of the signs (slight stylisation of the letters, etc.), account must be taken that 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, in view of the composition of the signs, the verbal elements are the ones that will be used to refer to them.
The relevant public, both the general and the professional one, will not see a descriptive or weak meaning in the word ‘BELLOF’ composing the signs in question, in relation to the relevant goods and, therefore, their distinctiveness is normal.
The signs have no elements that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in all the letters composing them. They differ, in their stylisation; however, as regards the differences in the figurative elements of the signs, limited to the way in which the letters are stylized, these are less important than the verbal elements. Therefore, since the signs coincide in full in their only and distinctive verbal element ‘BELLOF’, it is considered that they are similar to a high degree.
Aurally, the signs in conflict are identical.
Conceptually, neither of the signs has a clear meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
- 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.
- 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, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).
The contested goods are partly identical, partly similar and partly dissimilar to the goods for which the earlier mark is registered and they are directed at the public at large and at a professional public. The degree of attention varies from average to high.
The similarity between the signs results from the fact that they identically coincide in their normally distinctive element ‘BELLOF’, which is the only verbal element in both. Furthermore, the signs are aurally identical. The only difference between them is limited to their stylisation, which in the opinion of the Opposition Division is not sufficient to rule out the possibility of confusion.
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). Consequently, the consumers will focus their attention on the common, distinctive verbal element ‘BELLOF’, which is perfectly distinguishable in both signs.
The opponent stated that the applicant filed the contested trade mark in bad faith. This cannot be a basis for the opposition. Article 41 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.
Considering all the above, the Opposition Division concludes that the stylization of the contested sign is not enough to rule out the possibility of confusion. Therefore, the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 39 919 260. It follows that the contested trade mark must be rejected for the goods found to be identical and similar to those of the earlier 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.
The opponent has also based its opposition on the following earlier trade marks:
- French trade mark registration No 997 856 89 for the verbal mark ‘BELLOF’
- Italian figurative trade mark registration No 136 725 5 for the figurative mark .
Since these marks cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected on the basis of the earlier German trade mark. Therefore, no likelihood of confusion exists with respect to these earlier trade marks.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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
Patricia LOPEZ FERNANDEZ DE CORRES | Monika CISZEWSKA | Robert MULAC |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.