OPPOSITION No B 2 561 945

Cree, Inc., 4600 Silicon Drive, Durham, North Carolina 27703, United States (of America) (opponent), represented by Best Rechtsanwälte PartmbB, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Dongguan Sogoode Computer System Co., Ltd., Room 2001-2007, Floor 20, Block 16, Yuegang Financial Service Outsourcing Center, No. 7 Keji Ten Rd, Songshanhu High-tech Industrial Development Zone, People’s Republic of China (applicant), represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax, West Yorkshire HX1 2HY, United Kingdom (professional representative).

On 09/12/2016, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 561 945 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 020 523. The opposition is based on European Union trade mark registration No 9 564 477. 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

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

Class 11:        Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; light fixtures; flashlights; LED (light emitting diode) lighting fixtures; light bulbs; spotlights; incandescent burners.

The contested goods are the following:

Class 11:        Light bulbs; Electric lamps; Flares; Lamp casings; Lighting apparatus and installations; Cooking utensils, electric; Freezers; Air conditioning installations; Heating apparatus, electric; Hot water heating installations; Bath installations; Disinfectant apparatus; Radiators, electric; Automobile lights.

Light bulbs; lighting apparatus and installations are identically included in both lists of goods (including synonyms). 

The contested electric lamps; flares; lamp casings; automobile lights are included in the broad category of the opponent’s apparatus for lighting. Therefore, they are identical.

The contested cooking utensils, electric are included in the broad category of the opponent’s apparatus for cooking. Therefore, they are identical.

The contested freezers are included in the broad category of the opponent’s apparatus for refrigerating. Therefore, they are identical.

The contested air conditioning installations are included in the broad category of the opponent’s apparatus for ventilating. Therefore, they are identical.

The contested heating apparatus, electric; radiators, electric are included in the broad category of the opponent’s apparatus for heating. Therefore, they are identical.

The contested hot water heating installations; bath installations; disinfectant apparatus are included in the broad categories of the opponent’s apparatus for water supply and sanitary purposes. Therefore, they are identical.

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 found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. Taking into consideration that the goods have an impact on the consumption of energy (e.g. light bulbs, lamps and lighting apparatus, freezers) or on safety (automobile lights) and that they are expensive and/or not purchased frequently (e.g. air condition installations, heating apparatus)  the degree of attention is deemed to vary from above average to high.

3. The signs

CREE
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 earlier mark is the word mark ‘CREE’.

The contested sign is a figurative mark with the word element ‘CRECO’ depicted in fairly standard uppercase letters and without any further figurative element.

Both marks have no element that could be considered clearly more distinctive than other elements.

Both marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their first three letters ‘CRE’. However, they differ in the number of letters (four vs five) and in particular in the earlier mark’s last letter, that is, an additional ‘E’, and the last two letters of the contested sign ‘CO’. Furthermore, the earlier mark has a rather uncommon visual appearance due to the double presence of the letter ‘EE’.

Therefore, the signs are similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛CRE’, present identically in both signs. The pronunciation differs in the sound of the last letter ‛E’ of the earlier sign and the last two letters ‘CO’ of the contested mark, which have no respective counterparts. It has to be noticed that in most languages of the relevant territory, e.g. German or English, the signs differ in the number of their syllables, since the earlier mark will be perceived as consisting of one syllable whereas the contested sign has two (CRE-CO) leading to a distinct rhythm and intonation. However, in some languages the earlier mark will be pronounced disyllabic, too, e.g. in Spanish (CRE-E); nevertheless, the rhythm and intonation of the signs are different due to their different endings consisting of a double vowel (EE) in the earlier mark and a consonant-vowel combination (CO) in the contested sign.

Therefore, the signs are similar to a low degree.

Conceptually, while a part of the relevant the public in the relevant territory will perceive the earlier sign with a meaning, e.g. the English-speaking as ‘a member of a Native American people and/or its language’, the French-speaking part as an adjective meaning ‘created’ or the Spanish-speaking part as the command ‘believe!’ (the imperative mood of the verb ‘creer’), the other sign lacks any meaning in these parts of the territory. As regards these parts of the relevant public, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the other parts of the relevant public, e.g. the Greek- and the Polish-speaking parts, neither of the signs has a meaning for the public in the relevant territory. As regards these parts of the relevant public, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 in question from the perspective 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 signs are visually and aurally similar to a low degree. However, they are either not similar from a conceptual point of view or they lack any meaning.

It is true that the first parts of the conflicting marks are identical (CREE vs CRECO) and that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

However, in the case at hand the earlier mark is a relatively short mark consisting of only four letters; the fact that the signs differ in one and two letters respectively is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

In particular, the earlier sign will be perceived by the majority of the relevant public as a monosyllabic sign, whereas the contested sign contains two syllables. But even in the parts where the earlier sign is perceived disyllabic, the second syllables of the signs (CRE-E vs CRE-CO) are not phonetically and visually similar. Consequently, the fact that the signs coincide in three letters (or one syllable), does not lead to a finding of likelihood of confusion, even in case of identical goods, because the differing letters are not phonetically and/or visually similar and the differences between the signs outweigh the similarities in the present case. Furthermore, there is no conceptual similarity between the signs.

The opponent argues that the second syllable, that is, the last two letters of the contested sign (CRECO) will be perceived at least by the English-speaking part of the public as a mere abbreviation of ‘company’ denoting a business organization and being, thus, non distinctive. In this context, the opponent refers to a decision of the General Court to support its arguments. However, the Office is not bound by previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

Nevertheless, the previous case referred to by the opponent is not relevant to the present proceedings. In particular, the General Court in its ruling T-685/13 of 21/01/2015 confirmed the Office’s finding that part of the English-speaking public will perceive the letters ‘CO’ in the word mark ‘BLUECO’ as an abbreviation for company. However, this finding is not applicable to the present case, since in the cited case the first letters ‘BLUE’ of the sign ‘BLUECO’ have a clear conceptual meaning denoting a colour. Contrary to the opponent’s opinion, this is not the case with the contested sign ‘CRECO’ where the first three letters have no meaning in English. Therefore, and especially in the absence of any separating element between the two syllables, e.g. a dot (.) or a dash (-),  it is very unlikely that the relevant public will artificially split up the contested sign into the elements ‘CRE’ and ‘CO’, perceiving the latter one as the abbreviation of ‘company’.

Considering all the above, and especially the above average to high degree of attention of the relevant public, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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

Peter QUAY

Konstantinos MITROU

Zuzanna STOJKOWICZ

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.