LOTUS | Decision 2763723

Date Published: Sep 22, 2017

OPPOSITION No B 2 763 723

Group Lotus Plc, Potash Lane Hethel, Norwich, Norfolk NR14 8EZ, United Kingdom (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Gray's Inn Road, London WC1X 8BT, United Kingdom (professional representative)

a g a i n s t

France New Resplendence Inte Home Furnishing Industry Limited, Room 5, 7/F Ho King Commercial Centre, 2-16 Fa Yuen Street, Mongkok, Kowloon, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Beetz & Partner, Steinsdorfstr. 10, 80538 München, Germany (professional representative).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 763 723 is partially upheld, namely for the following contested goods and services:

Class 20: Furniture; Mattresses; Furniture fittings, not of metal; Bedding, except linen; Cushions; Pillows; Bolsters; Works of art of wood, wax, plaster or plastic; Bamboo curtains; Inflatable pillows.

Class 35: Advertising; Business management consultancy; Accounting; Personnel management consultancy; Relocation services for businesses; Sales promotion for others; Sponsorship search; Information agencies (Commercial -); Photocopying services.

2.        European Union trade mark application No 15 465 446 is rejected for all the above goods and services. It may proceed for the remaining services, namely for retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies in Class 35.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 465 446 for the figurative mark .

The opposition is based on European Union trade mark registration No 9 798 174 for the word mark ‘LOTUS’. 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.

1. The goods and services

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

Class 20: Furniture, mirrors, picture frames; Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 24: Textiles and textile goods, not included in other classes; Bed and table covers.

Class 35: Advertising; Business management; Business administration; Office functions.

The contested goods and services are the following:

Class 20: Furniture; Mattresses; Furniture fittings, not of metal; Bedding, except linen; Cushions; Pillows; Bolsters; Works of art of wood, wax, plaster or plastic; Bamboo curtains; Inflatable pillows.

Class 35: Advertising; Business management consultancy; Accounting; Personnel management consultancy; Relocation services for businesses; Sales promotion for others; Sponsorship search; Information agencies (Commercial -); Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Photocopying services.

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 20

Furniture is identically contained in both lists of goods.

The contested mattresses; bedding, except linen; cushions; pillows; bolsters; inflatable pillows are items used together with beds. Therefore, the contested goods may be complementary to the opponent’s furniture (which includes beds). Furthermore, they can coincide in relevant public and distribution channels. Therefore, they are similar.

The contested furniture fittings, not of metal are similar to the opponent’s furniture as they can coincide in end users and distribution channels. Furthermore, they are complementary.

The contested bamboo curtains may be produced by the same companies that manufacture the opponent’s furniture and are also often made available for sale through the same distribution channels and target the same end users. Therefore, the goods are similar.

The contested works of art of wood or plastic and the opponent’s goods (not included in other classes) of wood, or of plastics coincide in their nature. Their purpose, in the broadest sense, may also be the same in that they are for decoration. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its goods, it cannot be assumed that they coincide in other criteria.

The contested works of art of wax or plaster are classified according to the material of which they are made. They are, however, in general, objects that are designed for aesthetic appeal, such as object for interior design. Therefore, these goods may have the same purpose as the opponent’s furniture insofar as they are items for interior decoration. They can be sold in the same type of furniture or decoration shops and may target the same publics. Therefore, these goods are considered similar to a low degree.

Contested services in Class 35

Advertising is identically contained in both lists of services.

The contested business management consultancy; information agencies (commercial -) are included in the broad category of the opponent’s business management. Therefore, they are identical.

The contested accounting; photocopying services are included in the broad category of the opponent’s office functions. Therefore, they are identical.

The contested personnel management consultancy; relocation services for businesses are included in the broad category of the opponent’s business administration. Therefore, they are identical.

The contested sales promotion for others are included in the broad category of the opponent’s advertising. However, the contested sponsorship search are either included in or overlap with the opponent’s advertising. They are, therefore, identical.

The contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies and the opponent’s goods in Classes 20 and 24 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop whereas wholesale services is the sale of goods in quantity, for example to retailers. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.

Likewise, the contested retail and wholesale services are also dissimilar to all the opponent’s services in Class 35 which consist of services rendered by persons or organizations principally with the object of helping a commercial undertaking in the working or management of the business affairs or commercial functions. It also includes services rendered by advertising establishments, taking care of communications to the public by all means of diffusion. As mentioned before, retail services are meant to cover the services around the actual sale of goods, such as providing the customer with an opportunity to conveniently see, compare or test the goods. The services under comparison belong to different areas of activity, are of different natures and have different purposes and methods of use. They are offered through different distribution channels, target different end users and their commercial origin is also different. Finally, they are not complementary, nor in competition with each other.

2. 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 and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average (e.g. for the goods in Class 20) to high (e.g. for the services in Class 35), depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

LOTUS
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 common element ‘LOTUS’ is meaningful in certain territories, for example, in those countries where English or French is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English- and French-speaking parts of the public.

In this regard, the common element ‘LOTUS’ will be understood as ‘a type of tropical water lily (a plant with large, flat leaves that float on the surface of lakes and pools)’ by the relevant public (information extracted from Cambridge Dictionary on 04/09/2017 at http://dictionary.cambridge.org). As it does not describe any characteristic of the relevant goods and services, it is distinctive.

As regards the contested sign, it is composed of a distinctive verbal element written in a very slightly stylised typeface of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative component.

Visually, the signs coincide in the distinctive verbal element ‘LOTUS’. The signs differ only in the very slightly stylised typeface of the contested sign which plays a mere decorative function within the sign and it will not distract the consumer’s attention from the word it embellishes.

In this regard, when figurative marks with word elements and word marks are compared visually, what matters is whether the signs share a significant number of letters in the same position and whether the word element in the figurative sign is highly stylised. Similarity may be found despite the fact that the letters are graphically portrayed in different typefaces, in italics or bold, in upper or lower case or in colour. In principle, when the same letters are depicted in the same sequence, any variation in stylisation has to be high in order to find visual dissimilarity. In the present case, as stated by the opponent, the stylisation of the contested mark is so minimal that it may go unnoticed by the relevant public.

Therefore, the signs are visually highly similar (at least).

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs fully coincides in the syllables /lo-tus/, present identically in both signs as a distinctive element.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as an aquatic plant by the parts of the relevant public mentioned above, 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.

4. 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 English- and French-speaking parts of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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). This is known as the interdependency principle.

It has been established in the previous sections of this decision that the contested goods and services are partially identical, partially similar to varying degrees and partially dissimilar to the goods and services on which the opposition is based. Those found to be identical and similar at varying degrees target the public at large and professionals, with a degree of attentiveness that may vary from average to high, and the earlier mark has a normal degree of distinctiveness in relation to the relevant goods and services.

It has also been concluded that the signs are visually highly similar (at least) and aurally and conceptually identical. The only minor difference between the signs is confined to the very slightly stylised typeface of the contested mark that has a purely decorative nature and may even go unnoticed by the relevant public.

In addition, account should be 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 with 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).

Furthermore, it should also be born in mind that 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 covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub brand, a variation of the earlier mark, configured in a different way according to the type of goods and services which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the Opposition Division considers that the difference between the signs is not sufficient to counterbalance the degree of similarity between them as regards identical and similar goods and services, even those goods that are similar only to a low degree in view of the interdependency principle mentioned above. Therefore, the relevant public, including the public paying a high degree of attentiveness, may believe that the goods and services in dispute come from the same undertaking or, at least, economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English- and French-speaking parts of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark. The opposition is also successful insofar as the goods that are similar to a low degree are concerned. As explained before, the reason for this is that the similarities between the marks described above are clearly enough to outweigh the low degree of similarity between those goods.

The rest of the contested services 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 services cannot be successful.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin MITURA

Eva Inés PEREZ SANTONJA

Ric WASLEY

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.