OPPOSITION No B 2 631 300

Bemko Sp. z o.o., ul. Annopol 21, 03-236 Warszawa, Poland (opponent), represented by Jwp Rzecznicy Patentowi Dorota Rzążewska SP. J., ul. Żelazna 28/30, 00-833 Warszawa, Poland (professional representative)

a g a i n s t

Ryszard Skórka, Rms Trans Ryszard Skórka Unia Boxing Oświęcim, Brzezinka, Ul. Czarna 3, 32 600 Oświęcim, Poland (applicant), represented by Katarzyna Sas, Kościuszki 58c, 36-020 Tyczyn, Poland (professional representative).

On 08/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 631 300 is partially upheld, namely for the following contested goods and services:

Class 9: Apparatus and instruments for accumulating and storing electricity; Apparatus and instruments for switching electricity; Apparatus and instruments for controlling electricity; Electrical fuses; Contact fuses (Electric -); Electronic touch sensitive switches; Push button switches (Electrical -); Switches, electric; Switches, electric; Electric control panels; Plugs, sockets and other contacts [electric connections]; Electricity transformers; Electricity transformers; Distribution transformers; Control installations (Electric -); Regulating apparatus, electric; Electric boosters; Ducts [electricity]; Electricity storage apparatus; Electricity measuring instruments; Power regulating apparatus; Electronic blackboards; Electric installations for the remote control of industrial operations; Electric installations for the remote control of industrial operations; Electrical wiring installations; Electric power controllers; Mains monitoring apparatus (Electric -); Electric cables; Connection cables; Jump leads; Connection units (Electric -); Electronic circuits; Electrical circuits; Instrument dial; Electrical access control apparatus; Access control installations (Automatic -); Electric communication apparatus; Electric control apparatus; Monitoring apparatus, electric; Electrical controls; Safety locking devices [electric]; Measuring devices, electric; Programming units (Electric -); Electrical signalling apparatus; Electric installations for the remote control of industrial operations; Broadband installations; Monitoring units [electric]; Safety monitoring apparatus [electric]; Monitoring control apparatus [electric]; Process controlling apparatus [electric]; Information storage apparatus [electric or electronic]; Score display apparatus [electric].

Class 11: Garden lighting; Outdoor lighting; Wall lights; Ceiling lights; Electric lamps; Downlights; Lighting and lighting reflectors; Wall lights; LED landscape lights; LED light bulbs; LED luminaires; Lanterns; Lanterns for lighting; Spot lights for household illumination; Lamps; Safety lamps; Lamp reflectors; Luminaires; Lighting installations; Lighting fittings; Lighting fittings; Lighting armatures; Electric lamps; Electrical lighting fixtures; Lighting apparatus and installations; Lamp casings; Lighting fixtures for household use; Lighting apparatus utilising light emitting diodes (LEDs); Lightbulbs; Garden lighting; Outdoor lighting; Wall lights; Ceiling lights; Electric lamps; Downlights; Lighting and lighting reflectors; Wall lights; LED landscape lights; LED light bulbs; LED luminaires; Lanterns; Lanterns for lighting; Spot lights for household illumination; Lamps; Safety lamps; Lamp reflectors; Luminaires; Lighting installations; Lighting fittings; Lighting fittings; Lighting armatures; Electric lamps; Electrical lighting fixtures; Lighting apparatus and installations; Lamp casings; Lighting fixtures for household use; Lighting apparatus utilising light emitting diodes (LEDs); Lightbulbs; Lighting transformers.

Class 35: Retailing and wholesaling of the following goods: apparatus and instruments for accumulating and storing electricity, apparatus and instruments for switching electricity, apparatus and instruments for controlling electricity, electrical fuses, electronic touch sensitive switches, electric contact fuses, electric push button switches, electric control panels, sockets, plugs and other contacts (electric connections), electric cables, connection cables, jump start cables, fibre optic cables, electric switches, power switches, electronic blackboards, distribution boards, transformers, transformers (electricity), distribution transformers, electrical access control apparatus, electric control installations, electric regulating apparatus, electric communication apparatus, electric connection units, electric measuring devices, electric programming units, electrical signalling apparatus, electric boosters, automatic access control installations, electricity ducts, electric installations for the remote control of industrial operations, electrical wiring installations, broadband installations, electric monitoring apparatus, electric safety monitoring apparatus, electric monitoring control apparatus, electric installations for the remote control of industrial operations, electronic circuits, electrical circuits, electricity storage apparatus, electricity measuring instruments, electric or electronic information storage apparatus, power regulating apparatus, electric power controllers, electric process controlling apparatus, electric score display apparatus, electric mains monitoring apparatus, electric control apparatus, electric monitoring apparatus, electrical controls, electric safety locking devices, light-emitting diodes (LEDs), garden lighting, outdoor lighting, wall lights, ceiling lights, electric lamps, downlights, lighting and lighting reflectors, wall-mounted lights, LED landscape lights, LED light bulbs, LED luminaires, lanterns, lanterns for lighting, spot lights for household illumination, lamps, safety lamps, lighting reflectors, luminaires, lighting installations, lighting fixtures, lighting fittings, lighting armatures, electric lighting installations, electric light fittings, lighting apparatus and installations, lamp casings, lighting fixtures for household use, light-emitting diodes (LED) lighting apparatus, light bulbs, lighting transformers.

Class 37: Installation lighting systems; Repair or maintenance of electric lighting apparatus; Installation lighting systems; Repair or maintenance of electric lighting apparatus.

2. European Union trade mark application No 14 325 518 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 325 518. The opposition is based on European Union trade mark registration No 9 295 056. 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 and services

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

Class 9: Apparatus and instruments for the conducting, switching, converting, storage, regulating and controlling of electricity, excluding electric storage batteries for emergency lighting; electric circuit-breakers and switches, single phase or three phase overcurrent circuit-breakers, single phase or three phase alternating current circuit-breakers, trip switches, signalling lamps, time delay switches, contactors, electricity meters, extension leads, earthed extension leads, non-earthed extension leads, earthed extension leads with a switch, multi-sockets, non-earthed multi-sockets, earthed multi-sockets, earthed multi-sockets fitted with a switch, electrical connecters, electrical adaptors, mains plugs, sockets, electrical splitters, earthed electrical splitters, light sensors, electronic power supplies, sensors, movement sensors, electrical timer switches, manually operated, electronic timer switches, electricity meters, electrical components, quick couplings, quick lock couplings, electrical sockets and ceramic covers, starters, induction ballasts, electronic ballasts, electric transformers, toroidal transformers, electronic transformers.

Class 11: Installations for lighting; lighting fixtures, fluorescent lighting fixtures, hermetic fluorescent lighting fixtures, ceiling louvre lighting fixtures, exposed louvre lighting fixtures, wall and ceiling lighting fixtures, ceiling lamp fixtures, mobile; fixtures, industrial lighting fixtures, floodlights, halogen fixtures, mobile halogen fixtures, halogen fixtures with a motion sensor, lamps, small lamps, mini lamps, ground lighting fixtures, lighting sources, halogen lighting sources, metal-halide lamps, sodium lamps, fluorescent lamps, compact fluorescent lamps, LED lighting sources, emergency lighting fixtures, evacuation lighting fixtures, evacuation lighting fixtures with pictograms, emergency lighting modules, modular lighting fixtures, panel lighting; vfixtures, LED lighting fixtures, lighting fixtures equipped with LED lighting source, lighting fixtures equipped with an integrated LED lighting source, lighting fixtures with a focused light beam, LED lighting fixtures with a focused light beam.

Class 35: Wholesale and retail, export and import of electronic and lighting goods.

The contested goods and services are the following:

Class 9: Apparatus and instruments for accumulating and storing electricity; Apparatus and instruments for switching electricity; Apparatus and instruments for controlling electricity; Electrical fuses; Electronic touch sensitive switches; Contact fuses (Electric -); Push button switches (Electrical -); Electric control panels; Plugs, sockets and other contacts [electric connections]; Electric cables; Connection cables; Jump leads; Fiber optic cables; Switches, electric; Switches, electric; Electronic blackboards; Instrument dials; Electricity transformers; Electricity transformers; Distribution transformers; Electrical access control apparatus; Control installations (Electric -); Regulating apparatus, electric; Electric communication apparatus; Connection units (Electric -); Measuring devices, electric; Programming units (Electric -); Electrical signalling apparatus; Electric boosters; Access control installations (Automatic -); Ducts [electricity]; Electric installations for the remote control of industrial operations; Electrical wiring installations; Broadband installations; Monitoring units [electric]; Safety monitoring apparatus [electric]; Monitoring control apparatus [electric]; Electric installations for the remote control of industrial operations; Electronic circuits; Electrical circuits; Electricity storage apparatus; Electricity measuring instruments; Information storage apparatus [electric or electronic]; Power regulating apparatus; Electric power controllers; Process controlling apparatus [electric]; Score display apparatus [electric]; Mains monitoring apparatus (Electric -); Electric control apparatus; Monitoring apparatus, electric; Electrical controls; Safety locking devices [electric].

Class 11: Garden lighting; Outdoor lighting; Wall lights; Ceiling lights; Electric lamps; Downlights; Lighting and lighting reflectors; Wall lights; LED landscape lights; LED light bulbs; LED luminaires; Lanterns; Lanterns for lighting; Spot lights for household illumination; Lamps; Safety lamps; Lamp reflectors; Luminaires; Lighting installations; Lighting fittings; Lighting fittings; Lighting armatures; Electric lamps; Electrical lighting fixtures; Lighting apparatus and installations; Lamp casings; Lighting fixtures for household use; Lighting apparatus utilising light emitting diodes (LEDs); Lightbulbs; Garden lighting; Outdoor lighting; Wall lights; Ceiling lights; Electric lamps; Downlights; Lighting and lighting reflectors; Wall lights; LED landscape lights; LED light bulbs; LED luminaires; Lanterns; Lanterns for lighting; Spot lights for household illumination; Lamps; Safety lamps; Lamp reflectors; Luminaires; Lighting installations; Lighting fittings; Lighting fittings; Lighting armatures; Electric lamps; Electrical lighting fixtures; Lighting apparatus and installations; Lamp casings; Lighting fixtures for household use; Lighting apparatus utilising light emitting diodes (LEDs); Lightbulbs; Lighting transformers.

Class 35: Retailing and wholesaling of the following goods: apparatus and instruments for accumulating and storing electricity, apparatus and instruments for switching electricity, apparatus and instruments for controlling electricity, electrical fuses, electronic touch sensitive switches, electric contact fuses, electric push button switches, electric control panels, sockets, plugs and other contacts (electric connections), electric cables, connection cables, jump start cables, fibre optic cables, electric switches, power switches, electronic blackboards, distribution boards, transformers, transformers (electricity), distribution transformers, electrical access control apparatus, electric control installations, electric regulating apparatus, electric communication apparatus, electric connection units, electric measuring devices, electric programming units, electrical signalling apparatus, electric boosters, automatic access control installations, electricity ducts, electric installations for the remote control of industrial operations, electrical wiring installations, broadband installations, electric monitoring apparatus, electric safety monitoring apparatus, electric monitoring control apparatus, electric installations for the remote control of industrial operations, electronic circuits, electrical circuits, electricity storage apparatus, electricity measuring instruments, electric or electronic information storage apparatus, power regulating apparatus, electric power controllers, electric process controlling apparatus, electric score display apparatus, electric mains monitoring apparatus, electric control apparatus, electric monitoring apparatus, electrical controls, electric safety locking devices, light-emitting diodes (LEDs), garden lighting, outdoor lighting, wall lights, ceiling lights, electric lamps, downlights, lighting and lighting reflectors, wall-mounted lights, LED landscape lights, LED light bulbs, LED luminaires, lanterns, lanterns for lighting, spot lights for household illumination, lamps, safety lamps, lighting reflectors, luminaires, lighting installations, lighting fixtures, lighting fittings, lighting armatures, electric lighting installations, electric light fittings, lighting apparatus and installations, lamp casings, lighting fixtures for household use, light-emitting diodes (LED) lighting apparatus, light bulbs, lighting transformers; Provision of commercial information; Distribution of prospectuses and samples; Marketing; Advertising; Radio advertising; Television advertising; Press advertising; Advertising in websites on the Internet; Dissemination of advertising matter; Presentation of goods via communications media (retailing); Arranging and participating in trade fairs, exhibitions and demonstrations relating to the promotion of the aforesaid services; Consumer advice shops; Rental of advertising space.

Class 37: Installation lighting systems; Repair or maintenance of electric lighting apparatus; Installation lighting systems; Repair or maintenance of electric lighting apparatus.

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 9

The contested Apparatus and instruments for accumulating and storing electricity; Apparatus and instruments for switching electricity; Apparatus and instruments for controlling electricity; are identically contained in both lists of goods of this class (including synonyms).

The contested Electronic touch sensitive switches; Push button switches (Electrical -); Switches, electric; Switches, electric; Electric control panels; Plugs, sockets and other contacts [electric connections]; Electricity transformers; Electricity transformers; Distribution transformers; Control installations (Electric -); Regulating apparatus, electric; Electric boosters; Ducts [electricity]; Electricity storage apparatus; Electricity measuring instruments; Power regulating apparatus; Electronic blackboards; Electric installations for the remote control of industrial operations; Electric installations for the remote control of industrial operations; Electrical wiring installations; Electric power controllers; Mains monitoring apparatus (Electric -); are included in the broad categories of, or overlap with, the opponent’s Apparatus and instruments for the conducting, switching, converting, storage, regulating and controlling of electricity, excluding electric storage batteries for emergency lighting. Therefore, they are identical

The contested Electric cables; Connection cables; Jump leads; Connection units (Electric -); overlap with the opponent’s extension leads, as all the goods are different types of extension cords and cables. Therefore, they are identical.

The contested Electronic circuits; Electrical circuits; Instrument dials; are included in the broad category of, or overlap with, the opponent’s electrical components. Therefore, they are identical.

The contested Electrical fuses; Contact fuses (Electric -) are highly similar to the opponent’s electric circuit-breakers, as both act by interrupting the current flow after fault is detected. The goods have same purpose, can coincide in manufacturers, distribution channels and consumers.

The opponent’s retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Therefore, the opponent’s Wholesale and retail, of electronic goods, in class 35, are similar to a low degree to the applicant’s Electrical access control apparatus; Access control installations (Automatic -); Electric communication apparatus; Electric control apparatus; Monitoring apparatus, electric; Electrical controls; Safety locking devices [electric]; Measuring devices, electric; Programming units (Electric -); Electrical signalling apparatus; Electric installations for the remote control of industrial operations; Broadband installations; Monitoring units [electric]; Safety monitoring apparatus [electric]; Monitoring control apparatus [electric]; Process controlling apparatus [electric]; Information storage apparatus [electric or electronic]; Score display apparatus [electric] as the latter are all various types of electronic goods.

The remaining Fiber optic cables are cables containing one or more optical fibers. The nature and purpose of these goods does not coincide with any of the goods or services of the opponent. The goods can have different manufacturers, distribution channels and consumers. The goods are dissimilar.

Contested goods in Class 11

Lighting installations; Lighting fittings; Lighting fittings; are identically contained in both lists of goods (including synonyms).

The contested Garden lighting; Outdoor lighting; Wall lights; Ceiling lights; Electric lamps; Downlights; Lighting and lighting reflectors; Wall lights; LED landscape lights; Lanterns; Lanterns for lighting; Spot lights for household illumination; Lamps; Safety lamps; Lamp reflectors; LED luminaires; Luminaires; Lighting armatures; Electric lamps; Electrical lighting fixtures; Lighting apparatus; Lighting fixtures for household use; Lighting apparatus utilising light emitting diodes (LEDs); Lamp casings are included in the broad categories of the opponent’s installations for lighting and lighting fixtures. Therefore, they are identical.

The contested LED light bulbs; Lightbulbs are included in the broad category of the opponent’s lighting sources. Therefore, they are identical.

Lighting transformers are similar to the opponent’s Apparatus and instruments for the converting, regulating and controlling of electricity, excluding electric storage batteries for emergency lighting in Class 9. The goods coincide in nature and purpose and manufacturers. They can have the same consumers.

Contested services in Class 35

The contested Retailing and wholesaling of the following goods: electronic touch sensitive switches, electronic blackboards, electrical access control apparatus, electric control installations, electric regulating apparatus, electric communication apparatus, electric connection units, electric measuring devices, electric programming units, electrical signalling apparatus, electric boosters, automatic access control installations, electric installations for the remote control of industrial operations, broadband installations, electric monitoring apparatus, electric safety monitoring apparatus, electric monitoring control apparatus, electric installations for the remote control of industrial operations, electronic circuits, electricity measuring instruments, electric or electronic information storage apparatus, power regulating apparatus, electric power controllers, electric process controlling apparatus, electric score display apparatus, electric mains monitoring apparatus, electric control apparatus, electric monitoring apparatus, electrical controls, electric safety locking devices, light-emitting diodes (LEDs), garden lighting, outdoor lighting, wall lights, ceiling lights, electric lamps, downlights, lighting and lighting reflectors, wall-mounted lights, LED landscape lights, LED light bulbs, LED luminaires, lanterns, lanterns for lighting, spot lights for household illumination, lamps, safety lamps, lighting reflectors, luminaires, lighting installations, lighting fixtures, lighting fittings, lighting armatures, electric lighting installations, electric light fittings, lighting apparatus and installations, lamp casings, lighting fixtures for household use, light-emitting diodes (LED) lighting apparatus, light bulbs, lighting transformers refers to a retail of electronic and lighting goods. Therefore, these contested services are identical to, or overlap with, the opponent’s Wholesale and retail of electronic and lighting goods respectively.

The contested Retailing and wholesaling of the following goods: apparatus and instruments for accumulating and storing electricity, apparatus and instruments for switching electricity, apparatus and instruments for controlling electricity, electrical fuses, electric contact fuses, electric push button switches, electric control panels, sockets, plugs and other contacts (electric connections), electric cables, connection cables, jump start cables, fibre optic cables, electric switches, power switches, distribution boards, transformers, transformers (electricity), distribution transformers, electricity ducts, electrical wiring installations, electrical circuits, electricity storage apparatus, are considered similar to the opponent’s Wholesale and retail, of electronic and lighting goods. The services at issue have the same nature since both are retail services, having the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they coincide in relevant public and distribution channels.

However, the remaining Provision of commercial information; Consumer advice shops; Distribution of prospectuses and samples; Marketing; Advertising; Radio advertising; Television advertising; Press advertising; Advertising in websites on the Internet; Dissemination of advertising matter; Presentation of goods via communications media (retailing); Arranging and participating in trade fairs, exhibitions and demonstrations relating to the promotion of the aforesaid services; Rental of advertising space are advertising and marketing services in general consisting of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. These services have a different nature, purpose and methods of use compared to all the goods and services of the opponent. They have different origins and consumers. The services are dissimilar.

Contested services in Class 37

The contested Installation lighting systems is similar to the opponent’s Installations for lighting as they can coincide in producer, end user and distribution channels since it is common in the market that the producer of installations for lighting also provide these services..

The contester Repair or maintenance of electric lighting apparatus are similar to the opponent’s lamps as they can coincide in producer, end user and distribution channels since it is common in the market that the producer of installations for lighting also provide these services. Furthermore they are complementary.

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 and services found to be identical, highly similar or similar are directed at the public at large and at customers with specific professional knowledge or expertise. The degree of attention ranges from average to high, depending on the specific 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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 (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 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 public (e.g. such as the Estonian, Hungarian or Greek public).

The earlier mark is a figurative mark. It contains a word element, conjoined of the letters ECO in upper case light green and LINE in lower case dark green. The first letter E has two very small green leaves attached to its left upper corner. The element ECOLINE is visually more eye-catching than the small leaf elements which are considered to be less dominant than the other elements. The mark has no elements that could be considered clearly more distinctive than other elements.

The contested sign is a figurative mark. It contains letters ECO in upper case dark green, whereas the letter O is represented in a form of a light bulb. The element LINE is written in title case light green and has a thin line underneath it. On a second row the words ‘Lighting technologies’ are depicted in a very small title case typeface. The element ECOLINE together with the device element overshadows the words ‘Lighting technologies’ which are considered to be less dominant than the other elements due to their minuscular size and placement. The device element depicting a light bulb and a thin line are perceived with their natural meaning and considering that the relevant goods and services are all related to lighting apparatuses, their parts and accessories, cables and the sale and maintenance of these goods, this element is considered non-distinctive.

Visually, the signs coincide in the word element ECOLINE, despite the slight differences in the typeface. Both signs are depicted in two shades of green.

However, they differ in the device elements, such as the leaves in the earlier mark or the light bulb (considered non-distinctive) in the contested mark, in addition to the words ‘Lighting technologies’.

Furthermore, it is noted, that when signs consist of both verbal and figurative components, as is the case here, then in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is 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 (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually similar to an high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the letters ‘ECOLINE’, present identically in both signs. The pronunciation differs in the sound of the letters ‘Lighting technologies’ of the contested mark, forming a less dominant element, which have no counterparts in the earlier sign.

Therefore, the signs are aurally similar to a average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory resulting to a neutral comparison, the element depicting leaves in the earlier mark and the lightbulb in the contested mark will be associated with their natural meaning. To that extent, the signs are conceptually not similar.

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 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 and services 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

The goods and services have been found partially identical, partially similar to various degrees and partially dissimilar. The similarities and dissimilarities of the marks have been established.

The marks share the same distinctive element ECOLINE. The device element of the contested mark is a non-distinctive element for the relevant goods and services. Furthermore, the additional word elements ‘Lighting technologies’ is written in such a small typeface and placed in a secondary position in the sign. In addition, the public tends to pay particular attention to the first part of the trade mark, ECOLINE in the present case, which coincides. Also, the colours used in both marks are highly similar shades of green. The differences between the signs cannot outweigh the prevailing coinciding element ECOLINE.

The remaining figurative/stylisation elements in the marks will not particularly catch consumers’ attention, who will focus on the word elements.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English speaking public (e.g. such as the Estonian, Hungarian or Greek public) and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical, highly similar or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Cynthia DEN DEKKER

Erkki Münter

Francesca CANGERI SERRANO

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.