OPPOSITION DIVISION
OPPOSITION No B 2 827 536
Worlds Apart Ltd, Unit 3 St Columb Major Business Park, Trekenning, St Columb
Major, Cornwall TR9 6SX, United Kingdom (opponent), represented by Bailey
Walsh & Co LLP, 1 York Place Leeds, West Yorkshire LS1 2DR, United Kingdom
(professional representative)
a g a i n s t
Halo Tech HK Limited, 401 D1 Guiyuan Shahe East Road, Nanshan Dist, Shenzhen
518000, China and Halo Tech HK Limited, 65 Chemin Des Bateliers, 49000 Angers,
France (applicants).
On 09/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 827 536 is upheld for all the contested goods.
2. European Union trade mark application No 15 978 091 is rejected in its entirety.
3. The applicants bear the costs, fixed at EUR 620.
PRELIMINARY REMARK
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 all the goods of European Union trade mark
application No 15 978 091 for the word mark ‘GoGrow’. The opposition is based on
European Union trade mark registration No 4 500 229 for the word mark ‘GO GLOW’
and European Union trade mark registration No 12 707 964 for the figurative mark
. 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
Decision on Opposition No B 2 827 536 page: 2 of 6
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 European Union trade mark registration No 4 500 229 for the word mark
‘GO GLOW’.
a) The goods
The goods on which the opposition is based are the following:
Class 11: Lighting apparatus; lamps, luminaires, night lights, torches; light bulbs;
parts and fittings for the aforementioned goods.
Class 28: Games toys and playthings; electronic games toys and playthings.
The contested goods are the following:
Class 11: LED flashlights; LED lighting installations; LED light strips; LED mood
lights; LED landscape lights; LED light bulbs; LED underwater lights; LED light
machines; LED luminaires; LED lights for automobiles; Light-emitting diodes [LED]
lighting apparatus; LED lighting assemblies for illuminated signs.
All the contested goods consist of, or at least include, equipment that provides
artificial illumination. This is also true as regards LED light machines which are
apparatus that produce LED light.
As such, the contested goods, namely LED flashlights; LED lighting installations;
LED light strips; LED mood lights; LED landscape lights; LED light bulbs; LED
underwater lights; LED light machines; LED luminaires; LED lights for automobiles;
Light-emitting diodes [LED] lighting apparatus; LED lighting assemblies for
illuminated signs are all included in the broad category of, or at least overlap with, the
opponent’s lighting apparatus. Therefore, 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 goods found to be identical are directed at the public at large
as well as at business customers with specific knowledge or expertise.
The public’s degree of attentiveness may vary from average to high, depending on
the specific goods purchased. In particular, where the goods are particularly
expensive or have an impact on safety as, for instance, LED lights for automobile,
this may result in an increase of the relevant consumer’s degree of attention.
Decision on Opposition No B 2 827 536 page: 3 of 6
c) The signs
GO GLOW GoGrow
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 elements ‘GLOW’ and ‘GROW’ are meaningful in those countries where English
is understood and the respective meaning of the various elements could have an
impact on their distinctive character in relation to the relevant goods. Accordingly, the
Opposition Division finds it appropriate to focus the comparison of the signs on the
non English-speaking part of the public, such as the Bulgarian, Spanish or Italian
public, for which these parts of the signs have no meaning.
The earlier mark consists of the elements ‘GO’ and ‘GLOW’. As mentioned before,
‘GLOW’ has no meaning for the relevant public and is, therefore, distinctive.
The word ‘GO’ means ‘to walk; to move or travel on foot (as opposed to any other
means of locomotion, as creep, ride, swim, etc.); (sometimes spec.) to move on foot
at an ordinary pace (as opposed to run, etc.)’. It is the most general verb of motion in
English, used to express literal or figurative movement (i) irrespective of the point of
departure or destination, (ii) away from a place, person, or thing, or (iii) towards a
place, person, or thing, or in a particular direction (see
www.oed.com/view/Entry/79544?rskey=ExCSMo&result=4&isAdvanced=false#eid).
As such, not only the English-speaking consumers but also the majority of the non-
English speaking public can be expected to understand the meaning of ‘GO’. As it is
not descriptive or otherwise weak for the relevant goods, it is distinctive.
The contested sign is made up of the elements ‘GO’ and ‘GROW’. However, as the
sign consists of one word, the non-English speaking public for whom the element
‘GROW’ has no meaning, is unlikely to dissect the mark. This part of the public will
perceive the mark as a whole, consisting of only one verbal element ‘GOGROW’
which does not have any meaning and, as such, is inherently distinctive.
Visually and aurally, the signs coincide in five out of six letters. They only differ in
their third letter, ‘L’ and ‘R’ respectively. From an aural point of view, this difference
may pass unnoticed as the speech rhythm and intonation remains the same for both
signs irrespective of the different pronunciation rules in different parts of the relevant
Decision on Opposition No B 2 827 536 page: 4 of 6
territory. Visually, there is an additional minor difference due to the fact that earlier
sign consists of two words while the contested sign is written in one word. Overall,
the differences are, however, minimal. As they only occur in the middle of the signs,
they will be easily overlooked by the relevant consumer.
Therefore, the signs are visually and aurally highly similar.
Conceptually, the relevant public will perceive the contested sign as meaningless.
By contrast, in the earlier mark that public will perceive the word ‘GO’ with the
meaning set out above. Since one of the signs will not be associated with any
meaning, the signs are conceptually not similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
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. 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 non-English-
speaking public in the relevant territory. Therefore, the distinctiveness of the earlier
mark must be seen as normal.
e) Global assessment, other arguments and conclusion
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).
The goods are identical and the earlier mark has been found to have an average
degree of distinctiveness. Considering the perception of the non-English speaking
public, the signs do not have any non-distinctive elements and are highly similar from
a visual and aural perspective. Conceptually, the signs are not similar.
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).
With this in mind, the minimal visual and aural differences which only occur in the
middle of the signs may well pass unnoticed regardless of the level of attention of the
relevant public which, as mentioned above, may be higher in relation to goods that
are particularly expensive or can have an impact on safety. The lack of conceptual
Decision on Opposition No B 2 827 536 page: 5 of 6
similarity is also not sufficient to enable the relevant consumer to safely distinguish
between the marks at issue in relation to identical goods.
Considering all the above, there is a likelihood of confusion on the part of the non-
English-speaking part of the public, such as the Bulgarian, Spanish or Italian public.
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.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 4 500 229. It follows that the contested trade mark
must be rejected for all the contested goods.
As the earlier European Union trade mark registration No 4 500 229 ‘GO GLOW’
leads to the success of the opposition and to the rejection of the contested trade
mark for all the goods against which the opposition was directed, there is no need to
further examine the opposition inasmuch as it was also based on the opponent’s
earlier EUTM No 12 707 964 (16/09/2004, T-342/02, Moser
Grupo Media, S.L., EU:T:2004:268).
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 applicants are the losing party, they must bear the opposition fee as well as
the costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Jakub MROZOWSKI Elena NICOLÁS GÓMEZ Lucinda CARNEY
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.
Decision on Opposition No B 2 827 536 page: 6 of 6
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.