OPPOSITION No B 2 426 727

Bridgelux, Inc., 101 Portola Avenue, Livermore, California 94551-7555, United States of America (opponent), represented by FrKelly, 27 Clyde Road, Ballsbridge, Dublin 4, Ireland (professional representative)

a g a i n s t

Ecolux Limited, Clogherbrien, Tralee, Kerry, Ireland (applicant), represented by Bernadette Costello, 3 Gas Terrace, Tralee, Co Kerry, Ireland (professional representative).

On 25/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 426 727 is upheld for all the contested goods.

2. Community trade mark application No 13 023 411 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 023 411. The opposition is based on inter alia, Community trade mark registration No 7 432 867. 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.

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 Community trade mark registration No 7 432 867.

1. The goods

The goods on which the opposition is based are the following:

Class 9: Light emitting diodes, diode chips, displays and arrays and component parts thereof; desktop monitors; digital panel display products; digital video displays; software for operating the aforesaid goods; instructional materials for the aforesaid goods recorded electronically or optically or downloadable from a computer network.

Class 11: Lighting fixtures, apparatus for lighting; installations for lighting; lighting reflectors; lighting diffusers; lighting softeners; lighting restricting and focusing apparatus; lighting stands and mounts; lamps, flashlights; parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 11: Light-emitting diodes [LED] lighting apparatus; lighting and lighting reflectors; lightbulbs; lighting apparatus and installations; lighting for display purposes; lighting panels; luminous tubes for lighting.

The contested light-emitting diodes [LED] lighting apparatus; lighting and lighting reflectors; lightbulbs; lighting apparatus and installations; lighting for display purposes; lighting panels; luminous tubes for lighting are included in the broad categories of the opponent’s lighting fixtures, apparatus for lighting; installations for lighting. Therefore, they are considered identical.

2. The signs

BRIDGELUX
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the relevant public.

Visually, the signs are similar to the extent that they coincide in the letters ‘*R-I-D-G-E-L-U-X’. However, they differ in the first letter of each sign, ‘B’ in the earlier mark and ‘F’ in the contested sign. Moreover, they differ in the trade mark symbol ‘TM’ next to ‘FRIDGELUX’, which will be perceived as the symbol meaning ‘trade mark registered’ and will not be perceived as part of the contested sign, as well as in the colours and stylised typeface of the contested sign and its additional figurative elements, consisting of seven circles with a blue circle inside each, six of which form a circle with the seventh one in the middle of it. Lastly, the contested sign also differs in the words ‘INTELLIGENT DISPLAY LIGHTING’ in smaller letters at the bottom.

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 ‘*R-I-D-G-E-L-U-X’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛B’ of the earlier mark and ‘F’ of the contested sign, and in the word elements ‘INTELLIGENT DISPLAY LIGHTING’ in the contested sign, which have no counterpart in the earlier sign.

Conceptually, the earlier mark has no meaning for the relevant public. As regards the contested sign, it must firstly be noted that the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 13/02/2007, T‑256/04, ‘RESPICUR’). Therefore, the relevant public will artificially split the verbal element ‘FRIDGELUX’ of the contested sign into two parts, and perceive the elements ‘FRIDGE’ and ‘LUX’. This is because the first element is depicted in grey and the second in blue and, therefore, these components are clearly distinguished for these consumers. The element ‘FRIDGE’ has no meaning for the relevant public. The element ‘LUX’ refers, in some languages in the relevant territory, such as French or Spanish, to a measure of the amount of light produced by something and will be understood by at least part of the relevant public. The words ‘INTELLIGENT DISPLAY LIGHTING’ of the contested sign are English words that do not have any meaning for the public in the relevant territory. The figurative elements will be perceived as seven grey circles containing seven blue circles.

Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier mark has no element that could be clearly considered more distinctive than other elements.

The element ‘LUX’ of the contested mark will be associated for a part or the public with a measure of the amount of light produced by something. Bearing in mind that the relevant goods are lighting apparatus and installations, it is considered that this element is weak for these goods, namely for light-emitting diodes [LED] lighting apparatus; lighting and lighting reflectors; lightbulbs; lighting apparatus and installations; lighting for display purposes; lighting panels; luminous tubes for lighting.

The part of the relevant public that understands the meaning of that element will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The earlier mark has no element which could be considered clearly more dominant (visually eye‑catching) than other elements.

In the contested sign, the verbal element ‘FRIDGELUX’ and the figurative element are the dominant elements as they are the most eye‑catching parts of the sign, while the verbal element ‘INTELLIGENT DISPLAY LIGHTING’ is less eye-catching.

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. 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. 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. The degree of attention is average.

6. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of 11/11/1997, C‑251/95, ‘Sabèl’).

The goods are identical.

The signs are visually and aurally similar because they coincide in nine consecutive letters out of the first 10, differing only in the first letter of that element. They differ also in the additional figurative elements of the contested sign, seven grey circles with a blue circle inside each, six of which form a circle with the seventh one in the middle, and in the verbal element ‘INTELLIGENT DISPLAY LIGHTING’, which is a non-dominant element due to its size and position in the sign.

Concerning the typeface, colours and the figurative elements in the contested mark, the relevant consumers will focus their attention on the word element of the marks.

This is in line with the principles set forth by the Court of Justice, which confirms that, when a sign consists of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (judgment of 14/07/2005, T‑312/03, ‘Selenium-Ace’, paragraph 37; decision of 19/12/2011, R 0233/2011-4 – ‘Best Tone’, paragraph 24; decision of 13/12/2011, R 0053/2011-5 – ‘Jumbo’, paragraph 59).

Furthermore, it should be noted that consumers tend to remember similarities rather than dissimilarities between signs and that average consumers rarely have the chance to make a direct comparison between the different marks, but must trust in their imperfect recollection of them (see judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik Meyer’). Therefore, it is considered likely that the consumers may be unaware of the small difference between the earlier mark and the dominant verbal element in the contested sign.

The Opposition Division is of the opinion that the differences found between the earlier mark and the contested sign are not sufficient to counteract their similarities; consequently, the relevant public will associate the two signs and may, if not directly confuse the two signs, believe that they come from the same undertaking or from economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the relevant public. As stated above in section b) 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 Community trade mark No 7 432 867. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right Community trade mark No 7 432 867 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 examine the other earlier rights invoked by the opponent (judgment of 16/09/2004, T‑342/02, ‘Moser Grupo Media’).

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3), (6) and (7)(d)(i) CTMIR, 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

Victoria DAFAUCE MENÉNDEZ

Karin KUHL

Agueda MAS PASTOR

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.