OPPOSITION No B 2 748 450

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

Leacree (Chengdu) Co., Ltd., No. 516, Longan Road, Longquanyi District, Chengdu Economy and Technology Development Zone, Sichuan, People’s Republic of China (applicant), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative).

On 13/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 748 450 is partially upheld, namely for the following contested goods:

Class 9:        Communications networks; satellite navigational apparatus; radar apparatus; navigation apparatus for vehicles [on-board computers]; horns for loudspeakers; diagnostic apparatus, not for medical purposes; batteries for lighting; batteries for vehicles; battery chargers; reflecting discs for wear for the prevention of traffic accidents; signal lanterns; automatic indicators of low pressure in vehicle tires; thermostats for vehicles; voltage regulators for vehicles; speed checking apparatus for vehicles; milage recorders for vehicles; speed indicators; rechargeable batteries; batteries, electric.

Class 11:        Lights for vehicles; headlights for automobiles; light bulbs for directional signals for vehicles; vehicle headlights; lighting apparatus for vehicles; anti-glare devices for vehicles [lamp fittings]; lamps for directional signals of automobiles; automobile lights; filters for air conditioning; pocket searchlights; safety lamps; lamp reflectors; miners’ lamps; searchlights; beverage cooling apparatus; cooling installations and machines; refrigerators; heaters, electric, for feeding bottles; kettles, electric; electric hot-water bottles; anti-dazzle devices for automobiles [lamp fittings]; hot water boilers; air filtering installations; air purifying apparatus and machines; fans [air-conditioning]; air conditioners for vehicles.

2.        European Union trade mark application No 15 387 236 is rejected for all the above goods. It may proceed for the remaining goods, namely gas scrubbing apparatus in Class 11, and the uncontested goods in Classes 7 and 17.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 387 236, namely against all the goods in Classes 9 and 11. 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 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; chips [integrated circuits]; optoelectronic devices; microwave generating devices for industrial use, light emitting diodes; packaged light emitting diodes; laser diodes; photodiodes; transistors; diodes; semiconductor devices; semiconductor chips; semiconductor wafers; radio frequency (RF) devices; power switching devices; silicon carbide and gallium nitride semiconductor devices; light emitting diodes (LED) for use in connection with liquid crystal (LCD) monitors and televisions; silicon carbide semiconductor wafers.

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 9:        Communications networks; satellite navigational apparatus; radar apparatus; navigation apparatus for vehicles [on-board computers]; horns for loudspeakers; diagnostic apparatus, not for medical purposes; batteries for lighting; batteries for vehicles; battery chargers; reflecting discs for wear for the prevention of traffic accidents; signal lanterns; automatic indicators of low pressure in vehicle tires; thermostats for vehicles; voltage regulators for vehicles; speed checking apparatus for vehicles; milage recorders for vehicles; speed indicators; rechargeable batteries; batteries, electric.

Class 11:        Lights for vehicles; headlights for automobiles; light bulbs for directional signals for vehicles; vehicle headlights; lighting apparatus for vehicles; anti-glare devices for vehicles [lamp fittings]; lamps for directional signals of automobiles; automobile lights; filters for air conditioning; pocket searchlights; safety lamps; lamp reflectors; miners’ lamps; searchlights; beverage cooling apparatus; cooling installations and machines; refrigerators; heaters, electric, for feeding bottles; kettles, electric; electric hot-water bottles; anti-dazzle devices for automobiles [lamp fittings]; hot water boilers; air filtering installations; gas scrubbing apparatus; air purifying apparatus and machines; fans [air-conditioning]; air conditioners for vehicles.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 9

The contested satellite navigational apparatus; radar apparatus; navigation apparatus for vehicles [on-board computers]; diagnostic apparatus, not for medical purposes; thermostats for vehicles; milage recorders for vehicles are pieces of apparatus and instruments that, inter alia, measure the extent, quantity, amount, distance, temperature or degree of something. They are included in, or overlap with, the broad category of the opponent’s measuring apparatus and instruments. Therefore, they are identical.

The contested reflecting discs for wear for the prevention of traffic accidents; signal lanterns; automatic indicators of low pressure in vehicle tires; speed indicators are pieces of equipment used to communicate using signs agreed upon or understood as conveying warning, direction or information. They are included in the broad category of the opponent’s signalling apparatus and instruments. Therefore, they are identical.

The contested speed checking apparatus for vehicles are precision instruments with a specific function (checking speed). They are included in the broad category of the opponent’s checking (supervision) apparatus and instruments. Therefore, they are identical.

The contested batteries for lighting; batteries for vehicles; battery chargers; voltage regulators for vehicles; rechargeable batteries; batteries, electric are all pieces of apparatus and devices used in connection with electricity. They are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.

The contested horns for loudspeakers are included in the broad category of the opponent’s apparatus for reproduction of sound. Therefore, they are identical.

The contested communications networks are a collection of terminal nodes, links and any intermediate nodes that are connected to enable telecommunication between terminals. They include, for example, goods intended to be used as data transmission networks, which overlap with the goods in the broad category of the opponent’s apparatus for transmission of sound or images. Therefore, they are identical.

Contested goods in Class 11

The contested lights for vehicles; headlights for automobiles; vehicle headlights; lighting apparatus for vehicles; anti-glare devices for vehicles [lamp fittings]; lamps for directional signals of automobiles; automobile lights; pocket searchlights; safety lamps; lamp reflectors; miners’ lamps; searchlights; anti-dazzle devices for automobiles [lamp fittings] are devices for supplying artificial light or their fittings and are all used for providing illumination. They are included in the broad category of the opponent’s apparatus for lighting. Therefore, they are identical.

The contested beverage cooling apparatus; cooling installations and machines; refrigerators are included in the broad category of the opponent’s apparatus for refrigerating. Therefore, they are identical.

The contested heaters, electric, for feeding bottles; kettles, electric are included in the broad category of the opponent’s apparatus for cooking. Therefore, they are identical.

The contested electric hot-water bottles; hot water boilers are included in the broad category of the opponent’s apparatus for heating. Therefore, they are identical.

The contested fans [air-conditioning]; air conditioners for vehicles are machines that bring fresh air into a room (building) or a car and/or move it around. They are included in the broad category of the opponent’s apparatus for ventilating. Therefore, they are identical.

The contested light bulbs for directional signals for vehicles are included in the broad category of the opponent’s light bulbs. Therefore, they are identical.

The contested filters for air conditioning; air filtering installations; air purifying apparatus and machines are pieces of apparatus and equipment essentially designed for cleaning and purifying the air wherever they are installed. They are included in, or overlap with, the broad category of the opponent’s apparatus for sanitary purposes. Therefore, they are identical.

The contested gas scrubbing apparatus refers to a gas installation and has nothing relevant in common with any of the opponent’s goods in Classes 9 and 11, even though some of the opponent’s goods in Class 11 (e.g. apparatus for heating, steam generating, refrigerating, drying, ventilating, and water supply and sanitary purposes) relate to treatment of air. This is because the method of use and purpose of air treatment carried out by the contested gas scrubbing apparatus differ from those of the opponent’s goods in Class 11, given that the contested goods are basically air pollution control devices used to remove certain particulates and/or gases from industrial exhaust streams. It follows that the nature, purpose, producers, relevant public and distribution channels of the goods under comparison are different. These goods are neither in competition nor complementary. Therefore, these goods are dissimilar.

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 some of the goods have an impact on the consumption of energy (e.g. light bulbs, lamps and lighting apparatus, refrigerators) or on safety (automobile lights), and some of them are expensive and/or not purchased frequently (e.g. air conditioning installations, heating apparatus), the degree of attention is deemed to vary from 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 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 element ‘CREE’ of the earlier mark is meaningful in certain territories, for example in those countries where English, French or Spanish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the other parts of the public, such as the Czech-, German- and Slovak-speaking parts of the public, for which this element does not have any meaning.

The earlier mark is a word mark consisting of the single word ‘CREE’ and the contested sign is a figurative sign composed of the word ‘LEACREE’ in stylised black italic upper case letters.

Both of the verbal elements of the signs, ‘CREE’ and ‘LEACREE’, are meaningless for the public on which the present comparison focuses. Therefore, they are distinctive to an average degree in respect of the relevant goods.

The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

With regard to the present case, the Opposition Division is of the opinion that a significant part of the Czech-, German- and Slovak-speaking parts of the public will not artificially dissect the contested sign and will perceive it in its entirety. This is because the sign has no parts, letters or elements that would stand out visually and which would help the public to split the sign into separate meaningful words. Consequently, it is considered to be an undivided unit.

Visually and aurally, the signs coincide in the sequence of letters/sounds ‘CREE’, which forms the entire earlier mark. However, they differ in the remaining letters/sounds of the contested sign, ‘LEA’, which precede the coinciding letters/sounds.

Visually, the signs also differ in the stylisation of the contested sign. However, this stylisation is not considered particularly overwhelming and it will not distract the consumer’s attention from the word it embellishes.

Consequently, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 relevant goods from the perspective of the Czech-, German- and Slovak-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).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

It is established case-law that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30).

The present assessment of likelihood of confusion considers the perception of the Czech-, German- and Slovak-speaking parts of the public in the relevant territory. The relevant public consists of the public at large and business customers.

As concluded above, the contested goods are partly identical and partly dissimilar to the opponent’s goods; the degree of attention varies from average to high and the earlier mark has an average degree of inherent distinctiveness.

The signs in conflict are visually and aurally similar to an average degree and the conceptual aspect does not influence the assessment of the similarity between the signs, as explained in detail above in section c) of this decision. This is, in particular, justified by the fact that the earlier mark is completely incorporated in the contested sign.

The Opposition Division is of the opinion that the differences between the signs, as indicated in section c) of this decision, are not sufficient to counteract their similarities, also for the reasons explained below.

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/services covered are from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote a new product line or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public might detect certain visual and aural differences between the conflicting signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It is, therefore, conceivable that the relevant public, even with a high degree of attention, will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking under the ‘CREE’ brand.

In its submissions, the opponent argues that it is the owner of many ‘CREE’ trade mark registrations worldwide and that its products are sold in many countries, including in the United States of America and in European countries. In support of this argument, the opponent submits a list of its European Union trade mark registrations that include the word ‘CREE’ (Appendix 4). However, even if the opponent were to prove that it was the proprietor of a family/series of ‘CREE’ marks, this would have no impact on the outcome of this decision, given that a family/series of marks cannot overcome dissimilarity between goods and services. Consequently, this argument of the opponent must be set aside.

Based on an overall assessment, the Opposition Division finds that there is a likelihood of confusion (including a likelihood of association) on the part of the Czech-, German- and Slovak-speaking parts of the public in the relevant territory, and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 564 477. 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 sign must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

The Opposition Division

Vít MAHELKA

Martin MITURA

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.