OPPOSITION No B 2 711 524

Dong Guan Bright Yin Huey Lighting Co, Ltd, Pu-Jiang Rd., Da-Ban-Di Industrial Zone, Da-Ning Village, Hu-Men Town, Dong-Guan City, Guang-Dong, People’s Republic of China (opponent), represented by Haseltine Lake LLP, Redcliff Quay, 120 Redcliff Street, Bristol, BS1 6HU, United Kingdom (professional representative)

a g a i n s t

Etech srl, Via Antonio Carnazzi, 7, 24069 Trescore Balneario, Italy (applicant).

On 12/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 711 524 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 152 663, namely against all the goods in Class 11. The opposition is based on European Union trade mark registration No 10 903 896. 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: Light bulbs; lamps; lanterns for lighting; lamp casings; incandescent burners; chandeliers; ceiling lights; safety lamps; fairy lights for festive decoration; lights, electric, for Christmas trees.

The contested goods are the following:

Class 11: Light diffusers; Lighting transformers; Lighting apparatus; Luminaires; Lamps; Security lighting; Lamp shades; Lighting armatures; Display lighting; Lamp reflectors; Lighting fittings; Vehicle lighting and lighting reflectors; Electric light fittings; Electrical lighting fixtures; Indoor electrical lighting fixtures; Wall lights (fittings for -) [other than switches]; Electric fiber lighting apparatus; Flat panel lighting apparatus; Electric indoor lighting installations; Stage lighting apparatus; Fluorescent lighting apparatus; Lighting apparatus and installations; Emergency lighting installations; Luminaires for security use; Flameless light-emitting diode candles; Diffusers being parts of lighting installations; Light-emitting diodes [LED] lighting apparatus; Lighting devices for showcases; Organic light emitting diodes (OLED) lighting devices; Computer controlled lighting apparatus; Downlights; Strings of lights; Strings of coloured lights; Strings of coloured lights for decorative purposes; Magnesium filaments for lighting; Color filters for lighting apparatus; Filters for use with lighting apparatus; Filters for stage lighting; Filters for use with lamps; Lamp globes; Lighting tracks [lighting apparatus]; Photocells (Security lighting operated by -); Security lighting incorporating a heat activated sensor; Security lighting incorporating a movement activated sensor; Lighting being for use with security systems; Garden lighting; Lighting for ponds; LED luminaires; LED lighting installations; Fiber optic lighting fixtures; Flange light fittings; Combined lighting and ultraviolet apparatus; Electric track lighting units; Installations for lighting Christmas trees; Lighting fixtures for commercial use; Installations for street lighting; Lighting installations; Fixtures for incandescent light bulbs; Ultra-violet irradiators; Uplighters; Mercury lamps; Neon lamps for illumination; Solar powered lamps; Reflector lamps; Emergency lighting; Electric lamps; Electrical lamps for indoor lighting; Electrical lamps for outdoor lighting; Flexible lamps; Germicidal lamps; Light projectors; Aquarium lamps; Lamps for Christmas trees; Stroboscopic lamps [decorative]; LED light bulbs; Aquarium lights; Light bulbs; Roof lights [lamps]; Louvres for light control; LED landscape lights; Gas lamps; Accent lights for indoor use; Mood lights; Inspection lights; Decorative lights; Decorative lighting for Christmas trees; Reading lights; LED light machines; Luminous house numbers; Lamp finials; Lighting ornaments [fittings]; Mirror balls being lighting fittings; Lighting panels; Reflectors for light deflection; Screens for directing light; Screens for controlling light; Decorative lighting sets; Lighted disco balls; Self-luminous light sources; Full spectrum light sources; Light sources of electro luminescence; Hangings for lamps; Mobile light towers; Light discharge tubes; Discharge tubes, electric, for lighting; Luminous tubes for lighting; Laser light projectors; Lighting and lighting reflectors.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large.

The degree of attention is considered at least average.

3. The signs

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 figurative and features the word ‘LED’, followed by an apostrophe and a letter ‘S’, and the word ‘PRO’ written underneath. The letters in the word ‘LED’ are large and made up of small white circles, while the remaining letters are written in a standard white upper case typeface, much smaller in the case of the letter ‘S’. The word ‘PRO’ is partly superimposed over the bottom of the letter ‘D’. The phrase is set against a black strip running diagonally. Two smaller dark grey triangles at the top left and bottom right corners form a rectangle.

The contested sign is figurative, clearly featuring the words ‘PRO’, written in a standard black upper case italic typeface, and, beneath a thin black line below it, the phrase ‘LIGHTING SOLUTIONS’ in a standard upper case typeface. Part of the public will perceive the figurative element at the beginning of the sign as a highly stylised rendition of the letters ‘L’, ‘E’ and ‘D’ characterised by the joining of the top and bottom strokes of the letter ‘E’ with the letters ‘L’ before it and ‘D’ after it.

To the extent that the figurative element in the contested sign is identified as the expression ‘LED’, the marks have this element in common. ‘LED’ is the English abbreviation for light emitting diode and will be associated with this meaning throughout the European Union, since it is the common way to refer to this lighting technology (20/06/2013, R 1964/2012-5, LEDWAY/LEDWAVE). Bearing in mind that the relevant goods are lighting apparatus and installations, luminaires, lamps, bulbs, etc., this element is non-distinctive for all these goods.

The apostrophe and letter ‘S’ in the earlier mark are used in English to indicate the genitive case. However, that is one of the best-known features of this language and most of the relevant public throughout the European Union with a basic understanding of English will understand it as indicating belonging to a certain person. The non-English-speaking public will perceive it as qualifying the word ‘LED’, for example in Spanish as indicating the plural. Given this, it has no impact on the distinctive character of the earlier mark.

The element ‘PRO’, which the marks have in common, will be associated with the abbreviated form of the word ‘professional’, referring to a person who is an expert in a specific field, owing to its similarity to the linguistic equivalents in the relevant languages, for example ‘profissional’ in Portuguese, ‘profesional’ in Spanish and Romanian, ‘professionnel’ or ‘professionnelle’ in French, ‘professionale’ in Italian, ‘professionneel’ in Dutch, ‘profesjonalista’ in Polish, ‘profesionál’ in Czech and Slovak, ‘profesionalas’ in Lithuanian and ‘profesionālis’ in Latvian. As the General Court has stated (20/11/2002, T-79/01 & T-86/01, Kit Pro / Kit Super Pro, EU:T:2002:279), the expression ‘pro’ is ‘commonly used in trade for the presentation of all kinds of goods and services’. Insofar as the public perceives the word ‘Pro’ as a laudatory term referring to the positive, or best, qualities associated with goods used by professionals, its distinctiveness is weak in relation to the goods at issue.

The element ‘LIGHTING SOLUTIONS’ of the contested sign will be associated by the English-speaking part of the public with devices for lighting. Bearing in mind that the relevant goods are lighting apparatus and installations, luminaires, lamps, bulbs, etc., this element is non-distinctive for all these goods. For the rest of the public, the element ‘LIGHTING’ and, to some extent, the element ‘SOLUTIONS’ (also understood in French, for example) of the contested sign have no meaning and are, therefore, distinctive.

The element ‘LED’ in the earlier mark is the dominant element as it is the most eye-catching due to its larger size and position at the beginning of the mark.

The elements ‘LED’ and ‘PRO’ in the contested sign are the co-dominant elements as they are the most eye-catching due to their larger size and position at the top of the sign.

Bearing in mind the above conclusions on the non-distinctive and weak word elements, their impact on the overall impressions of the signs is very limited. Therefore, the figurative elements in each sign are more distinctive.

Moreover, for the part of the public that perceives the word ‘LED’ in the contested sign not as the letters ‘L’, ‘E’ and ‘D’ but rather as a purely figurative element, the signs coincide visually, aurally and conceptually in only the weak element ‘PRO’. Therefore, they are dissimilar. The Opposition Division will continue with the comparison of the signs for the rest of the public.

Visually, the signs coincide in the words ‘LED’, which is non-distinctive, and ‘PRO’, which is weak. They differ in the figurative elements and the stylisation of the lettering in each sign, which are distinctive, and in the apostrophe and letter ‘S’ of the earlier mark and the phrase ‘LIGHTING SOLUTIONS’ of the contested sign, which are distinctive for the non-English-speaking part of the public.

The non-distinctive and weak word elements that the signs have in common are stylised in different manners, as their letters are in different fonts, styles and colours. The signs also have different structures, as the positions of the words in the signs are not the same.

As the signs coincide only in irrelevant aspects, it is concluded that the signs are not visually similar.

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 ‘LED’ and ‘PRO’, present identically in both signs. As explained above, these elements have a limited impact. The pronunciation differs in the sound of the letter ‘S’ of the earlier mark and in the sound of the letters ‘LIGHTING SOLUTIONS’ of the contested sign, which have no counterparts in the other sign. Aurally, the contested sign is much longer, due to the additional syllables of the words ‘LIGHTING SOLUTIONS’.

Considering what was stated above about the limited impact of the coinciding words and their different lengths, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and the impact of the non-distinctive and weak word elements in the signs. The figurative element of the word ‘LED’, made up of small white circles, in the earlier mark will be perceived by the relevant public as spotlights, therefore conveying the same concept as the verbal element ‘LED’. ‘PRO’, present in both signs, will be perceived as a laudatory term referring to the positive, or best, qualities associated with goods used by professionals. For the English-speaking public, the words ‘LIGHTING SOLUTIONS’ will reinforce the concept conveyed by the verbal elements ‘LED’ and ‘PRO’ in relation to professional lighting.

As the signs will be associated with the same meaning, that of professional lighting, the signs are conceptually similar to a low degree.

As the signs have been found similar in at least one aspect of the comparison for the part of the public that perceives the first element in the contested sign as the word ‘LED’, 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the goods in question.

5. Global assessment, other arguments and conclusion

The contested goods are assumed to be identical to the opponent’s goods and they target the public at large, whose degree of attention is average.

For the part of the public that perceives the element ‘LED’ in the contested sign not as a word but rather as a purely figurative element, the signs coincide in only the weak element ‘PRO’ and, therefore, are dissimilar. According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected for this part of the public.

For the part of the public that perceives the element ‘LED’ in the contested sign as a word, the signs under comparison are visually dissimilar but aurally and conceptually similar to a low degree. Both signs have a lower than normal degree of distinctiveness and the similarity created by the words that they have in common, ‘LED’ and ‘PRO’, is significantly lessened by the fact that these elements are secondary within the overall impressions made by the signs.

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 signs differ in their lengths, the styles of their constituent elements, their structures and their colour compositions. Moreover, the relevant English-speaking public, encountering the earlier mark, will be struck by the combination of a common noun with the apostrophe and letter ‘S’, as it indicates belonging to a thing (in this case, a type of light) instead of to a person, as is usual. The additional word elements and the different figurative elements are clearly perceptible and are sufficient to differentiate the signs even in relation to identical goods.

The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145).

When considered as a whole, the differences stated above are sufficient to counteract the similarities between the signs, which result from non-distinctive or weak elements.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Fabian GARCÍA QUINTO

Loreto URRACA LUQUE

Elisa ZAERA CUADRADO

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.