OPPOSITION No B 2 452 004

Klaus Bruchmann, Am Ölberg, 7a, 96450 Coburg, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Kon.El.Co. S.p.a., Piazza Medaglie D’Oro 1, 20135 Milan, Italy (applicant), represented by Stefano Merico, Via Eschilo 190 int. 7, 00125 Rome, Italy (professional representative).

On 09/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 452 004 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 149 117, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 3 337 664. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, for reasons of procedural economy, at this point the Opposition Division will not undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use had been proved for all the relevant goods and services, which is the best light in which the opponent’s case can be considered.

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: Electronic and electric switching devices.

The contested goods are the following:

Class 9: Batteries for lighting; traffic control apparatus [luminous]; illumination regulators; wall lights (fittings for -) [switches]; photocells for use with security lighting; ballasts for electrical lighting fittings; lighting ballasts; security surveillance apparatus; security warning apparatus; security control apparatus; protective and safety equipment; security alarms; personal security alarms; safety, security, protection and signalling devices; luminous safety beacons; safety relays [electric]; safety signals [luminous]; security alarm systems [other than for vehicles]; security cameras; speakers [audio equipment]; audio amplifiers; audio apparatus; car audio apparatus; audiovisual apparatus; information technology and audiovisual equipment; audio cassettes; talking books; audio cable; discs (compact -) [audio-video]; audio discs; audio/visual and photographic devices; apparatus for the reproduction of sound; portable media players; mp3 players; magnetic coded card readers; audio tapes; sound recorders; audiovisual receivers; sound recording carriers; video communications apparatus; video graphics accelerator; video amplifying apparatus; apparatus for the transmission of images; display devices, television receivers and film and video devices; video intercom apparatus; video digitizers; baby monitors; video monitor controllers; video devices; video players; video cassettes; video screens; video mixers; video screens; video cards; video tuners; video tape recorders; camcorders; video cassettes; videodiscs; video projectors; video transmitters; video telephones; voltage stabilizing power supply; regulated power supply apparatus; electric batteries for powering electric vehicles; power connectors; electric power supply devices; power packs [batteries]; power supply units (transformers); electric power supply units; switches, electric; electric power supply sockets; mains power units (electric -); electrical sockets; socket outlets (electric -); batteries; batteries for lighting; battery testers; electrical cables; electricity transformers.

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.

The contested wall lights (fittings for -) [switches]; switches, electric are identically contained in both lists of goods and services (including synonyms).

A socket is a device in a wall into which an electric cord can be plugged. The contested illumination regulators; electric power supply sockets; electrical sockets; socket outlets (electric -); regulated power supply apparatus; electric power supply devices; electric power supply units; mains power units (electric -); power connectors, electricity transformers; power supply units (transformers) are considered similar to the opponent’s electric switching devices. These goods are of the same nature in that they are all electric devices that allow an electrical current to pass through; they can coincide in producers, end users and distribution channels.

The contested batteries for lighting; traffic control apparatus [luminous]; photocells for use with security lighting; ballasts for electrical lighting fittings; lighting ballasts; security surveillance apparatus; security warning apparatus; security control apparatus; protective and safety equipment; security alarms; personal security alarms; safety, security, protection and signalling devices; luminous safety beacons; safety relays [electric]; safety signals [luminous]; security alarm systems [other than for vehicles]; security cameras; speakers [audio equipment]; audio amplifiers; audio apparatus; car audio apparatus; audiovisual apparatus; information technology and audiovisual equipment; audio cassettes; talking books; audio cable; discs (compact -) [audio-video]; audio discs; audio/visual and photographic devices; apparatus for the reproduction of sound; portable media players; mp3 players; magnetic coded card readers; audio tapes; sound recorders; audiovisual receivers; sound recording carriers; video communications apparatus; video graphics accelerator; video amplifying apparatus; apparatus for the transmission of images; display devices, television receivers and film and video devices; video intercom apparatus; video digitizers; baby monitors; video monitor controllers; video devices; video players; video cassettes; video screens; video mixers; video screens; video cards; video tuners; video tape recorders; camcorders; video cassettes; videodiscs; video projectors; video transmitters; video telephones; voltage stabilizing power supply; electric batteries for powering electric vehicles; power packs [batteries]; batteries; batteries for lighting; battery testers; electrical cables are dissimilar to the opponent’s electronic and electric switching devices. This is because the mere fact that some of the contested goods such as audiovisual apparatus; portable media players and mp3 players are operated by a switch is not sufficient to establish similarity between the finished product and its parts (27/10/2005, T‑336/03, Mobilix, EU:T:2005:379, § 61). These goods do not coincide in nature or purpose and they are not in competition with each other or complementary. Furthermore, they are not commonly provided by the same undertakings, nor do they have the same distribution channels.

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 may vary from average to higher than average, on account of the specialised nature of some of the goods.

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 a figurative sign consisting of an arrow pointing into the edge of the letter ‘o’ of the word ‘on’, written in fairly standard bold typeface. All elements are in black.

The contested sign is a figurative mark containing the letter ‘o’ followed by a dot in black, and a slightly stylised letter ‘n’ in green. These letters are in fairly commonplace bold typeface letters. The expression ‘light is on’ appears under these elements, in a much smaller size, in rather standard black characters.

The word ‘on’, in the earlier mark, is a generic English term used on many electric and electronic devices to indicate that they are functioning. In fact, when something such as a machine or an electric light is ‘on’, it is functioning. More specifically, this word will be understood, inter alia, as an adjective — ‘functioning; operating: turn the switch to the on position’ — or as an adverb — ‘when something such as a machine or an electric light is on, it is functioning or in use. When you switch it on, it starts functioning’ (information extracted from Online Collins English Dictionary on 24/10/2016 at http://bit.ly/2eKAaNA). Bearing in mind that the earlier mark is registered for electronic and electric switching devices, this element is non-distinctive for these goods, since it clearly gives information about the purpose of those goods. The figurative element, namely, the arrow pointing at the word ‘on’, will convey the message that in order to make the devices or apparatus in question function, they should be put in the ‘on’ position by, for instance, sliding or plugging something in to the right. Thus, this element is also considered non-distinctive.

The earlier mark has no elements that could be considered clearly more distinctive than other elements. In particular, when considering all the elements in the mark, namely the word ‘on’ and the arrow, they will be understood as an instruction to make electric or electronic devices function (e.g. slide to the right in order to switch the device on). It follows that its distinctive character, albeit very limited, must be found in the particular combination of the various elements.

As regards the contested mark, the public will overlook the presence of the dot between the letters ‘o’ and ‘n’ and read the word simply as an original representation of the word ‘on’. Hence, the word ‘on’ will be interpreted as above and is considered endowed with very low distinctive character for the relevant goods, namely wall lights (fittings for -) [switches]; switches, electric; illumination regulators; electric power supply sockets; electrical sockets; socket outlets (electric -); power connectors, electricity transformers and power supply units (transformers), which are used or necessary to switch on electronic apparatuses.

The examination of the present opposition will focus on the part of the public that will not take into consideration the dot between ‘o’ and ‘n’ in the contested mark and, thus, will perceive the element ‘o.n’ as the word ‘on’.

For the part of the public that understand English, the expression ‘light is on’ in the contested mark is considered weak as it informs consumers of the characteristics of the goods in question. For these consumers, the contested mark has no element that could be considered more distinctive than other elements. For the remaining part of the relevant public, the expression ‘light is on’ will be fanciful and therefore more distinctive. However, due to its subordinate position and size the consumer will not give it more attention than the non-distinctive more eye-catching element ‘o.n’. Moreover, the contested sign’s distinctiveness, albeit low, must be considered to lie in the particular combination of its various elements.

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

The element ‘o.n’ in the contested sign is the dominant element as it is the most eye-catching.

Visually, the signs have a different overall structure; the earlier mark is composed of one word and one figurative element placed on the same level while the contested mark is made up of words placed on two different levels and of different sizes. The signs coincide in the sequence of the letters ‘o, n’, which are separated in the contested mark by a dot. The marks differ in their colours, the figurative element in the earlier mark, and in the dot and the text ‘light is on’ in the contested mark.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short signs small differences, such as the additional dot and phrase ‘light is on’ in the contested sign and the arrow in the earlier mark, may frequently lead to a different overall impression, all the more so when the similar common element is non-distinctive due to its clear reference to characteristics of the goods.

Taking into account the above consideration and the fact that the distinctive character of the signs lies in the particular combination of the various elements, the signs are considered visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs will coincide in the sound of the word ‘on’, present identically in both signs. The other elements of the signs are not likely to be pronounced as they are either figurative (the arrow) or written in small print in a subordinate position (the phrase ‘light is on’). Since the word ‘on’ is considered non-distinctive for the relevant goods their coincidence in sound must be considered to have little impact and, therefore, the signs are aurally similar to a low degree.

Conceptually, the element ‘on’ in the signs will be understood to have the meaning explained above, namely as an indication that something is functioning, or working. As seen above, this element has been considered non-distinctive for the goods at issue.

The arrow in the earlier mark, considered together with the word ‘on’, will be perceived as indicating the direction something should be moved in in order for a device to start functioning. This figurative element has also been considered non-distinctive for the goods in question.

As to the contested mark, the text ‘light is on’ is an English expression that will be understood as such by the relevant public with a knowledge of English. For the rest of the public this expression is meaningless.

In light of the above, it is considered that all meaningful elements of the signs will be perceived as references to characteristics of the goods and not as indicators of origin. Therefore, the coincidence in the word ‘on’ can at most lead to a low degree of conceptual similarity.

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.

The opponent did not explicitly claim that his 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 the goods in question, namely electronic and electric switching devices in Class 9.

5. Global assessment, other arguments and conclusion

The conflicting goods are partly identical, partly similar and partly dissimilar.

The Court has held that 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).

It has been established that the relevant public will recognise the element ‘on’ in both marks and will understand its meaning as an indication that something is working or is functioning and consequently is non-distinctive for the goods in question, which can be switched on and off in order to function. Therefore, when encountering the signs, the public will see this element as an indication of the characteristics or purpose of the goods offered. Moreover, there are other differences between the signs, such as the dot and the additional text ‘light is on’ in the contested mark and the arrow in the earlier mark as well as the colours and the different overall structure. The earlier mark as a whole is inherently not much more than the sum of individual components that are distinctive to a low degree and, therefore, it has a very low degree of distinctive character for the goods at issue. It is therefore considered unlikely that a consumer, even paying an average degree of attention, could confuse the commercial origin of the goods at the moment of their purchase. This applies, a fortiori, to the highly attentive consumers, who are able to distinguish between the signs even more easily.

Considering all the above, the Opposition Division concludes that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

COSTS

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

Since the opponent is the losing party, he 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.

The Opposition Division

Isabel DE ALFONSETI HARTMANN

Claudia ATTINÀ

Adriana VAN ROODEN

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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.