OPPOSITION No B 2 403 734

Finatech Entreprises, S.A., 1 rue Pierre et Marie Curie, 63200 Riom, France (opponent), represented by Cabinet Lavoix, 62, rue de Bonnel, 69448 Lyon Cédex 03, France (professional representative)

a g a i n s t

Shusheng Fang, 509, Shenhe Building, Fuyong Town, Baoan 518101 Shenzhen Guangdong, People’s Republic of China (applicant), represented by Freeman Harris Solicitors, 6 Sutton Street, London E1 0BB, United Kingdom (professional representative).

On 25/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 403 734 is partially upheld, namely for the following contested goods:

Class 7: LED light engines.

Class 11: Burners for lamps; Carrying cases specially adapted for DJ lighting gear and electric lights; Ceiling light fittings; Chandeliers; Chimneys for oil lamps; Colour filters for use in lighting instruments; LED (light emitting diode) lighting fixtures; LED (light emitting diodes) lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications; LED and HID light fixtures; LED flood lights and LED work lights for construction settings; LED landscape lights; LED light bulbs; LED light machines; LED strobe lights to be placed on public safety vehicles.

2. Community trade mark application No 12 877 403 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 12 877 403. The opposition is based on French trade mark registration No 144 079 822. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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: Lighting apparatus and installations; Lighting lamps; Flashlights; spotlight; lighting apparatus for vehicles; lights for vehicles; vehicle headlights.

The contested goods, after limitation, are the following:

Class 7: LED light engines.

Class 9: Switches and electrical wire.

Class 11: Burners for lamps; Carrying cases specially adapted for DJ lighting gear and electric lights; Ceiling light fittings; Chandeliers; Chimneys for oil lamps; Colour filters for use in lighting instruments; LED (light emitting diode) lighting fixtures; LED (light emitting diodes) lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications; LED and HID light fixtures; LED flood lights and LED work lights for construction settings; LED landscape lights; LED light bulbs; LED light machines; LED strobe lights to be placed on public safety vehicles; Ultraviolet ray lamps, not for medical purposes.

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 7

The contested LED light engines are similar to the opponent’s lighting apparatus and installations. The contested goods are principally combinations of multiple LED modules designed for specific lighting engines. A light engine is the LED equivalent of a conventional lamp. It normally consists of an LED chip mounted on a circuit board that has both electrical and mechanical fixings, meaning that it is ready to be fixed in the luminaire. Both are used for lighting purposes. In addition, they can coincide in their relevant public, their distribution channels and their commercial origin.

Contested goods in Class 9

The contested switches and electrical wire are mainly devices for conducting or switching electricity, whereas the opponent has protection for goods in Class 11, which is a broad category of lighting apparatus consisting of various lighting engines, some specifically intended for vehicles. These goods have different commercial purposes, natures and methods of use. The mere fact that certain goods can be composed of several components does not automatically establish similarity between the finished product and its parts. Therefore, although the opponent’s goods, all being electrical goods, require some of the contested goods, for example electrical wire, for their correct operation, this is not sufficient for arguing in favour of similarity between the goods at issue, especially since they are not commonly produced by the same undertakings. In addition, they are not in competition. Therefore, the goods are dissimilar.

Contested goods in Class 11

The contested chandeliers; LED (light emitting diode) lighting fixtures; LED (light emitting diodes) lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications; LED and HID light fixtures; LED flood lights and LED work lights for construction settings; LED landscape lights; LED light bulbs; LED light machines; LED strobe lights to be placed on public safety vehicles are included in the broad category of the opponent’s lighting apparatus. Therefore, they are identical.

The contested burners for lamps; ceiling light fittings; chimneys for oil lamps; colour filters for use in lighting instruments are similar to the opponent’s lighting apparatus. They can coincide in producer, end users and distribution channels. Furthermore, they can be complementary.

The contested carrying cases specially adapted for DJ lighting gear and electric lights are similar to the opponent’s lighting apparatus, which includes DJ lighting gear and electric lights. They are complementary and can coincide in producer, end users and distribution channels.

The contested ultraviolet ray lamps, not for medical purposes, which are a type of electromagnetic radiation lamps, as are radio waves, infrared radiation, X-rays and gamma-rays, are not directly related to the opponent’s goods in the lighting sector in Class 11. They have different natures, purposes and methods of use. In addition, they differ in the relevant public and they are not complementary or in competition with each other. Consequently, the 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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is deemed average.

3. The signs

GO-LIGHT	GOOLIGHT
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 bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

In general terms, 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; 12/07/2006, T‑97/05, Marcorossi, EU:T:2006:203, § 39; 22/06/2005, T‑34/04, Turkish Power, EU:T:2005:248, § 43).

Both signs are word marks.

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

Visually, both marks are similar to the extent that all the letters of the earlier mark, ‘GO*LIGHT’, are entirely reproduced in the contested mark. However, the signs differ in the hyphen, ‘-’, of the earlier trade mark and in the additional or second letter ‘O’ of the contested sign. Therefore, the marks are overall visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛GOLIGHT’ and, since the hyphen does not entail a difference in the pronunciation, they differ only in the sound of the second ‘O’ of the contested sign, which is barely perceptible. Therefore, the signs are aurally almost identical or at the very least similar to high degree.

Conceptually, the word ‘GOOLIGHT’ in the contested sign has no meaning for the public. The term ‘GO-LIGHT’ in the earlier mark has no meaning for the majority of the French public. Therefore, neither of the signs has a meaning for this part of the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, part of the relevant public will understand the word ‘GO’ of the earlier mark, since it is a very basic English word (verb to go: to move or proceed; to leave a place; to keep or be in motion; etc., WordReference.com Dictionary). The hyphen, ‘-’, and the element ‘LIGHT’ have no meaning for this public, nor does the contested sign. The applicant considers that the French consumer will most likely understand the word ‘light’ as ‘lumière’ and submitted an exhibit from ‘W.E.B Dubois Learning Centre’, which ranks the word ‘light’ at position 221 of the most commonly used English words. The Opposition Division considers that a ‘most commonly used word’ is not the same as a ‘basic word’ and, therefore, that the average French consumer will not recognise the meaning of this word as it is not a ‘basic word’. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this other part of the public.

As the signs have been found to be similar or identical 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

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).

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 covered are from the same or economically linked undertakings.

If a significant part of the relevant public for the goods at issue may be confused as to the origin of the goods, this is sufficient to find that there is a likelihood of confusion. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused.

As concluded above, the contested goods are partly identical, partly similar and partly different to those of the earlier mark and target a public, be it professional or not, whose degree of attention is average. The marks are aurally identical or at least highly similar and visually highly similar. For the majority of the relevant public, a conceptual comparison is not possible as neither of the signs has a meaning. For the remainder of the public, the signs are not conceptually similar. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness.

The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

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).

In light of all the foregoing considerations, the Opposition Division concludes that the differences between the signs in question are not sufficient to rule out a likelihood of confusion, including a likelihood of association, at least for the part of the public for which a conceptual comparison is not possible. The public will be led to believe that the goods designated by the signs at issue come from the same or from economically linked undertakings.

However, in its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the elements ‘go’ or ‘light’. In support of its argument the applicant refers to several Community and trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include these elements in question. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 144 079 822.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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) CTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall 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

Catherine MEDINA

Pedro JURADO MONTEJANO

Solveiga BIEZA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.