Board of Appeal EUIPO, 21 december 2017, Ruby Decor v Essege
Trade Mark Law. Ruby Fires obtained an International registration (No 982 775) designating the European Union of the word sign 'RUBY FIRES' for goods in class 6 (i.a. covering and materials for fireplaces), class 11 (i.a. heating, building-in fireplaces) and class 19 (i.a. building materials for chimneys). Essege filed a request for a declaration of invalidity of the sign for all the goods on 10 October 2014 based on the Benelux trade mark (No 540 912) 'RUBY'. The Cancellation Division found that there was a genuine use of the earlier mark for class 11 (heating apparatus), that the goods were similar to various degrees and that the signs were highly visually, aurally and conceptual similar.
The appeal is dismissed. The Board of Appeal finds that the earlier mark has been put to genuine use. The use has been proved with a large quantity of invoices of which a significant number relate to the Benelux and with advertising brochures. The addition of other elements such as ‘KSP’ and ‘255’ does not change the distinctive character of the sign as is it obvious for the relevant public that these additional elements are not part of the sign but indicate specific models of the ‘RUBY’ heaters. The Board also finds that the earlier mark has been used for the registered goods. The products have been sold continuously during the relevant period of time and a significant turnover has been generated, which means that there is a genuine use.
The goods for which the mark 'RUBY FIRES' is registered are similar to an average degree or identical to the goods for which the earlier mark is registered. The goods in Class 6 are parts of ‘fireplaces’ or ‘heating apparatus’ and the goods in Class 11 fall under the broad category of ‘heating apparatus’. The goods in Class 19 are used to build ‘fireplaces’. According to the Board of Appeal, 'RUBY' is the dominant element of the contested mark. It follows from this, that the conflicting signs are visually and aurally highly similar. Part of the public will perceive the term 'RUBY' as a dark red jewel, as something that is dark red in colour or as a female name, according to the Collins English Dictionary. Another part of the public may not associate the term with any meaning or concept. Therefore, the conceptual comparison is either identical or it remains neutral.
The Board of Appeal considers for the likelihood confusion that the goods at issue target both the general public and professionals and that the relevant territory is the Benelux. In view of the partial identity and partial similarity of the conflicting goods, and the high visual and aural similarity of the signs, a likelihood of confusion between the marks for all goods can be found according to the Board. Since the signs only differ in the descriptive element ‘FIRES’, the public could be lead to believe that the goods in question come from the same undertaking or economically-linked undertakings.
Read the decision here.