OPPOSITION No B 2 471 327

Led’s Go Project, SL, Calle Italia, 28, 08700 Igualada (Barcelona), Spain (opponent), represented by Marks & Us, Marcas y Patentes, Licenciado Poza 52, 6ºB, 48013 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Qingdao Jiulongde Electrical Installation Co., Ltd., Floor 11C, Block 5,288 Ningxia Road, Shinan District, Qingdao City, Shandong Prov., People’s Republic of China (applicant), represented by Würth & Kollegen, Sögestr. 48, 28195 Bremen, Germany (professional representative).

On 18/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 471 327 is partially upheld, namely for the following contested goods:

Class 9: Signal lanterns; electronic notice boards; light-emitting diodes [led]; neon signs; traffic-light apparatus [signalling devices]; optical fibers [fibres] [light conducting filaments].

Class 10: Lamps for medical purposes.

Class 11: Light-emitting diodes [led] lighting apparatus; lighting apparatus for vehicles.

2. Community trade mark application No 13 372 123 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 13 372 123. The opposition is based on Community trade mark registration No 13 062 691. The opponent invoked Article 8(1)(a) and (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 and services

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

Class 9: Light-emitting diodes [LED]; light emitting diode displays.

Class 11: LED underwater lights; LED luminaires; LED light bulbs; LED landscape lights; LED light machines; light-emitting diodes [LED] lighting apparatus; light-emitting diodes [LED] lighting apparatus.

Class 35: Business representative services; arranging of contractual [trade] services with third parties; services rendered by a franchisor, namely, assistance in the running or management of industrial or commercial enterprises; business management and organization consultancy.

The contested goods are the following:

Class 9: Signal lanterns; electronic notice boards; light-emitting diodes [led]; transformers [electricity]; neon signs; semi-conductors; chips [integrated circuits]; lighting ballasts; traffic-light apparatus [signalling devices]; optical fibers [fibres] [light conducting filaments].

Class 10: Lamps for medical purposes; ultraviolet ray lamps for medical purposes; x-ray apparatus for medical purposes; x-rays (apparatus and installations for the production of -), for medical purposes; x-ray tubes for medical purposes.

Class 11: Light-emitting diodes [led] lighting apparatus; lighting apparatus for vehicles; bread baking machines; refrigerators; freezers; ventilation hoods; heat accumulators; hydrants; water purification installations; germicidal lamps for purifying air.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 (Canon criteria).

Contested goods in Class 9

Light-emitting diodes [led] are identically contained in both lists of goods.

The contested electronic notice boards overlap with the opponent’s light emitting diode displays to the extent that they both include electronic notice boards that use light-emitting diodes. Therefore, they are considered identical.

The contested neon signs are similar to the opponent’s light emitting diode displays, as they both have the same nature and purpose (light-emitting displays), may be in competition with each other, are distributed through the same channels and target the same relevant public.

The contested signal lanterns; traffic-light apparatus [signalling devices] are similar to the opponent’s light emitting diode displays, as they are all devices that emit light and therefore have the same nature and intended purpose. Furthermore, they are likely to be manufactured by the same companies and are aimed at the same consumers.

The contested optical fibers [fibres] [light conducting filaments] and the opponent’s light-emitting diodes [LED] have similar natures and purposes, target the same relevant public, are distributed through the same distribution channels and may coincide in their producers, as they can be used together. The goods are, therefore, similar.

The contested transformers [electricity]; semi-conductors; chips [integrated circuits], lighting ballasts have entirely different natures, purposes and methods of use from the opponent’s goods and are not in competition with each other. Furthermore, although the contested lighting ballasts are used with lighting devices, they are not used with LEDs. Therefore, they are dissimilar.

These contested goods are not similar to the opponent’s services in Class 35 either. These services of the opponent are essentially related to business management and administration and they have no relevant points of contact with the contested goods at issue. Besides being different in nature, given that services are intangible whereas goods are tangible, they serve different needs, are distributed through different distribution channels and have different methods of use, users and producers/providers. They are neither in competition nor complementary.

Therefore, the contested transformers [electricity]; semi-conductors; chips [integrated circuits], lighting ballasts are dissimilar to the opponent’s goods and services.

Contested goods in Class 10

The contested lamps for medical purposes include lamps for medical examination (i.e. those emitting visible light) and therefore have a similar nature to that of the opponent’s LED light bulbs in Class 11. They have the same method of use and are likely to be produced by the same companies, which have expertise in the same area. The goods are, therefore, similar.

The contested ultraviolet ray lamps for medical purposes; x-ray apparatus for medical purposes; x-rays (apparatus and installations for the production of -), for medical purposes; x-ray tubes for medical purposes are appliances, installations and devices for medical purposes emitting x-rays or ultraviolet rays. They have different natures, purposes (e.g. x-ray scanning or ultraviolet skin treatment versus lighting) and methods of use from the opponent’s goods. The goods are neither in competition nor complementary and are not likely to be distributed through the same channels. Therefore, they are dissimilar.

Furthermore, these contested goods are dissimilar to the opponent’s services. These services of the opponent, being essentially business management and administration, have no relevant points of contact with the goods at issue. They have different natures (given that services are intangible whereas goods are tangible), serve different needs, are distributed through different distribution channels and have different methods of use, users and producers/providers. They are neither in competition nor complementary.

Contested goods in Class 11

Light-emitting diodes [led] lighting apparatus is identically contained in both lists of goods.

The contested lighting apparatus for vehicles overlaps with the opponent’s light-emitting diodes [LED] lighting apparatus because they both include light-emitting diodes [LED] lighting apparatus for vehicles. Therefore, they are considered identical.

The contested bread baking machines; refrigerators; freezers; ventilation hoods; heat accumulators; hydrants; water purification installations; germicidal lamps for purifying air are machines having a specific purpose, namely baking bread, cooling, freezing, ventilation, accumulating heat, hydrating, purifying water or purifying air. The purpose of the opponent’s goods in Classes 9 and 11 is different: provision of light. These goods satisfy different consumer needs, are not in competition and are not likely to be distributed through the same channels or manufactured by the same companies. Therefore, they are dissimilar.

These contested goods are also dissimilar to the opponent’s services, which are essentially business management and administration and thus have no relevant points of contact with the contested goods at issue. They have different natures (given that services are intangible whereas goods are tangible), serve different needs, are distributed through different distribution channels and have different methods of use, users and producers/providers. They are neither in competition nor complementary.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the highly stylised letters ‘AOD’. The stylisation of those letters is almost identical and differs only in colour (blue in the earlier mark and black in the contested sign) and the fact that the letters are slightly more extended horizontally in the contested sign, although this can be perceived only by comparing both signs side by side. The signs differ in the additional verbal element ‘Advanced Optronic Devices’ written in much smaller blue letters below the element ‘AOD’ in the earlier mark. Overall, the signs are visually highly 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 ‛AOD’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the words ‘Advanced Optronic Devices’ of the earlier mark, which have no counterparts in the contested sign.

Conceptually, for a part of the public neither of the signs has a meaning. Since in such case a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

Another part of the public in the relevant territory (e.g. the English-speaking public) will perceive the words ‘Advanced Optronic Devices’ as referring to progressive optoelectronic machines or tools used for a specific task. Optoelectronics is the study or use of devices in which an optical input produces an electrical output, or in which electrical stimulation produces visible or infrared output. However, the other sign lacks any meaning for this part of the public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. Although in the earlier mark the letters ‘AOD’ will be perceived as an acronym of the words ‘Advanced Optronic Devices’, on their own (in the contested sign) they have no meaning. Therefore, there is no conceptual similarity between the signs.

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 contested sign has no element that could be clearly considered more distinctive than other elements.

The element ‘Advanced Optronic Devices’ of the earlier mark will be associated with progressive optoelectronic machines or tools used for a specific task. Bearing in mind that the relevant goods are or may contain optoelectronic devices (light-emitting diodes [LEDs]), it is considered that this element is weak for all the goods. 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. For the part of the public that does not see any meaning in the earlier sign, no element can be considered clearly more distinctive than other elements.

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

The element ‘AOD’ in the earlier mark is the dominant element as it is the most 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. 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, despite the presence of a weak element (at least for part of the public) in the mark as stated above in section c) of this decision.

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 or similar are directed at both the public at large and business customers with specific professional knowledge or expertise. Some of the goods at issue target only professionals (e.g. traffic-light apparatus). The degree of attention will vary from average to higher than average.

6. Global assessment, other arguments and conclusion

The contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods and services.

The signs are visually and aurally similar on account of the coinciding letter sequence ‘AOD’, which constitutes the visually dominant element of the earlier mark and the entirety of the contested sign.

Furthermore, in both marks the letters ‘AOD’ are depicted in a highly stylised and almost identical manner. The only differences between the two are the colour and the fact that the contested sign is slightly more horizontally extended. The latter difference can be noticed only by comparing the signs side by side; however, this rarely happens in reality. Consumers usually do not have two signs in front of them side by side, but must rely on their imperfect recollection of them. The difference between the colours used in the two signs, blue and black, is also not particularly striking.

The remaining difference between the signs is the additional verbal element ‘Advanced Optronic Devices’ of the earlier mark. For the part of the public that associates the word with a meaning, as explained above, this element is weak. Furthermore, the words ‘Advanced Optronic Devices’ are in much smaller letters below the big, bold, upper case letters ‘AOD’ and therefore are secondary. Consumers will therefore pay less attention to this weak and/or secondary element.

The Opposition Division considers that, given the high visual similarity between the elements ‘AOD’ and the lesser role of the element ‘Advanced Optronic Devices’ of the earlier mark, the differences between the signs are incapable of outweighing the significant similarities between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public (even considering that the degree of attention might be higher than average) and therefore the opposition is partially well founded on the basis of the opponent’s Community trade mark registration.

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.

For the sake of completeness, it must be mentioned that the opposition must also fail in so far as based on grounds under Article 8(1)(a) CTMR and directed against the remaining goods because the signs and/or the goods and services are obviously not identical.

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

Ric WASLEY

Vita VORONECKAITE

Wolfgang SCHRAMEK

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.