OPPOSITION DIVISION
OPPOSITION No B 2 792 987
Securlite, 13 rue Camille Desmoulins, 92130 Issy Les Moulineaux, France
(opponent), represented by Cabinet Fedit-Loriot, 38, avenue Hoche, 75008 Paris,
France (professional representative)
a g a i n s t
Cefla Societa’ Cooperativa, Via Selice Provinciale, 23/A, 40026 Imola, Italy
(applicant), represented by Manzella & Associati S.r.l., Via dell’Indipendenza, 13,
40121 Bologna, Italy (professional representative).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 792 987 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods of European Union trade
mark application No 15 559 396 , namely against all of the goods in
Class 11. The opposition is based on French trade mark registration No 113 843 530
‘SLED’. 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.
Decision on Opposition No B 2 792 987 page: 2 of 6
a) The goods
The goods on which the opposition is based are the following:
Class 11: Lighting apparatus.
The contested goods are the following:
Class 11: Lighting and lighting reflectors; LED luminaires.
The contested lighting refers to the same goods, and is identical to the opponent’s
lighting apparatus.
The contested lighting reflectors; LED luminaires are included in the broad category
of the opponent’s lighting apparatus. They are identical.
b) 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 relevant goods are directed at the public at large and at
business customers with specific professional knowledge or expertise in relation to
lighting equipment. The degree of attention varies from average to relatively high,
depending on the specialised nature of the goods, the frequency of purchase and
their price.
c) The signs
SLED
Earlier trade mark Contested sign
The relevant territory is France.
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).
Being a word mark, the earlier mark has no dominant elements by definition. As
regards the contested sign, although it comprises several graphically separated
components, none of them is visually more outstanding than others.
The English abbreviation ‘LED’ is commonly understood by the public in the relevant
territory as ‘light-emitting diode’ which refers to a two-lead semiconductor light
Decision on Opposition No B 2 792 987 page: 3 of 6
source. Typical applications for high-efficiency and high-power LEDs include
illumination and lighting, for example street or architectural lighting, aviation lights,
automotive lighting and Christmas lights.
Despite the fact that the element ‘LED’ of the contested sign is depicted in lower case
letters, the relevant public, whether the general public or professionals, will
immediately understand its meaning as being directly descriptive of the kind of the
goods for which registration is sought by the contested sign. Therefore, this element
is non-distinctive.
The single letter ‘C’ of the contested sign will be perceived as such without triggering
any further semantic associations. Being fanciful for the goods at issue, it has an
average degree of inherent distinctiveness.
The contested sign’s figurative element, depicted in little red squares, separates the
verbal components and is likely to be perceived as a stylised hyphen. Moreover, it
can bring to mind a string of LEDs thus creating a semantic unit with the verbal
element ‘LED’. Be that as it may, the role of this element is purely decorative and
consumers will not attach any trade mark significance to it.
As regards the earlier mark, a substantial part of the public will not dissect it into
elements and will perceive it as an indivisible block. In French, the word ‘SLED’ has
no meaning and is distinctive to an average degree for the goods at issue.
However, although the earlier mark is composed of one verbal element, it cannot be
denied that a reduced part of the public will break it down into elements that suggest
a concrete meaning that they already know. Therefore, from the perspective of this
part of the public the earlier mark will be a juxtaposition of the letter ‘S’ with the
abbreviation ‘LED’, the former being fanciful and distinctive for the goods, whilst the
latter lacking any distinctiveness, for the same reasons as given in respect to this
element of the contested sign. The context of the goods covered by the earlier mark
will facilitate such a perception.
The comparison will proceed in relation to both scenarios.
Conceptually, from the standpoint of the part of the public which perceives the
earlier mark without any meaning, but associates the contested sign with the letter
‘C’, the signs are not conceptually similar. The fact that the contested sign contains
the non-distinctive verbal element, ‘LED’, which is reinforced by the equally non-
distinctive figurative element, will have no impact on the comparison of the signs.
From the perspective of the remaining part of the public which discerns the concept
of ‘LED’ in the earlier mark, the signs are conceptually dissimilar because they
coincide in a non-distinctive element, and the letters ‘S’ and ‘C’ convey different
concepts. To that extent, the overlap in the element ‘LED’ has no impact.
Visually, from the standpoint of the part of the public which does not single out ‘LED’
as an element of the earlier mark, the signs coincide in the letter sequence ‘LED’,
however, they differ in all of the other constituents. Specifically, the graphemes that
the signs begin with, ‘S’ and ‘C’, have no visual resemblance. The contested sign
further differs in the figurative element, albeit non-distinctive, and its overall
stylisation.
The signs clearly differ in their structure, since the single word comprising the earlier
mark forms an indivisible whole, whereas the separation into several components is
Decision on Opposition No B 2 792 987 page: 4 of 6
particularly marked in the contested sign. That is not only due to the fact that the
letter ‘C’ and the element ‘LED’ are not conjoined, but also on account of the
presence of the red figurative element between them. Moreover, given that the
element ‘LED’ of the contested sign is non-distinctive, it will not be capable of holding
the public’s attention. It has to be taken into account that the signs at issue are rather
short. In short signs, every single letter and feature has a significant weight in the
perception of the public.
Therefore, the signs are not visually similar for the part of the public which does not
single out the element ‘LED’ in the earlier mark.
From the perspective of the remaining part of the public, the signs have no visual
similarity either. That is because, in this scenario, the element ‘LED’ will be perceived
as non-distinctive also in the earlier mark, and the overlap in this element will have
no impact.
Aurally, the part of the public which does not recognise ‘LED’ as an element of the
earlier mark is likely to pronounce the earlier mark as /slɛd/ and the contested sign as
/se-lɛd/. Notwithstanding the coincidence in four sounds, namely /s*lɛd/, the signs do
differ in the additional vowel of the contested sign, /e/, and the number of syllables in
which each sign will be enunciated. Specifically, the earlier mark will be a
monosyllabic word, but the contested sign will have two clearly pronounced syllables.
The coincidence in the sequence of the sounds /led/ is made less detectable by, on
the one hand, the fact that the element ‘LED’ will not be singled out in the earlier
mark since it is not attributed a meaning of its own and, on the other hand, the fact
that these sounds form part of the same syllable together with the preceding letter,
‘S’. It must be recalled that the element ‘LED’ of the contested sign is non-distinctive,
which diminishes the weight of this coincidence between the signs. Furthermore,
since the signs under comparison are rather short, the abovementioned differences
will be mentally registered by the average consumer.
Therefore, for the part of the public which does not single out the element ‘LED’ in the
earlier mark, the signs are aurally similar to a low degree.
Also where ‘LED’ is recognised as an element of the earlier mark, there will be a
section of the public which will pronounce the signs as /slɛd/ and /se-lɛd/. The
abovementioned considerations apply to this scenario, with the additional
circumstance that the overlapping element will be perceived as non-distinctive.
Nevertheless, it is admitted that there is a low degree of aural similarity between the
signs, given the limited differences between them.
As regards the remaining part of the public, however, it cannot be excluded that the
earlier mark is pronounced as a two-syllable word. Triggered by the perception of
‘LED’ as a meaningful element, the public will tend to separate it from the rest of the
mark and thus the initial letter, ‘S’, will be sounded out like a syllable, /ɛs/.
For this part the public, the pronunciation of the earlier mark is likely to be /ɛs-lɛd/, as
opposed to the contested sign sounding like /se-lɛd/. Given that the element ‘LED’
will be perceived as non-distinctive in both signs and that the public’s attention will be
diverted to the other components of the signs, namely the initial syllables which
feature readily notable differences, and also bearing in mind the fact that the signs
are rather short, it is concluded that for this part of the public the signs are not aurally
similar.
Decision on Opposition No B 2 792 987 page: 5 of 6
Conclusion on the comparison of signs
As the signs have been found aurally similar to a low degree for a part of the relevant
public, the examination of likelihood of confusion will proceed.
However, for the remaining part of the relevant public, the signs are dissimilar overall.
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a
finding of likelihood of confusion. Since for this part of the public the signs are
dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled,
and for this part of the public the opposition must be rejected already at this point.
d) 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.
As established in section c) of this decision, irrespective of whether or not the public
singles out the element ‘LED’ in the earlier mark, the earlier mark as a whole lacks
any meaning for the goods at issue. Therefore, the distinctiveness of the earlier mark
must be seen as normal.
e) Global assessment, other arguments and conclusion
As concluded in section c) of this decision, for a part of the relevant public there is a
certain similarity between the signs. However, that similarity only exists on an aural
level and only to a low degree.
The goods at issue are lighting apparatus for which the technical specifications,
appearance and aesthetic aspects are the primary factors that are taken into account
by the public before making a purchase. Generally, the choice of these goods is done
after a careful visual inspection. It follows that the aural similarity between the signs
is not particularly relevant for the goods in question.
Therefore, notwithstanding that the goods of the conflicting signs are identical, the
low degree of aural similarity established between the signs is insufficient for a
finding of likelihood of confusion, even where the public’s degree of attention is not
enhanced.
The opponent refers to the principle of interdependence which implies that a lesser
degree of similarity between the goods and services may be offset by a greater
degree of similarity between the signs, and vice versa. The Opposition Division has
taken this principle into account when assessing the likelihood of confusion and the
fact that the goods have been found identical cannot, in this case, compensate for
the differences identified between the signs.
Considering all the above, there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected.
Decision on Opposition No B 2 792 987 page: 6 of 6
COSTS
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Catherine MEDINA Solveiga BIEZA Oana-Alina STURZA
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.