OPPOSITION No B 2 610 916

nLight Corporation, Sorronrinne 9, 08500 Lohja, Finland (opponent), represented by Leitzinger Oy, Tammasaarenkatu 1, 00180 Helsinki, Finland (professional representative)

a g a i n s t

Meiling Wang, No.154 Wuyi Road, Poyang Town, Poyang County, Shangrao City, Jiangxi Province, People’s Republic of China (applicant), represented by AL & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 14/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 610 916 is upheld for all the contested goods, namely:

Class 9: Optical character readers; cell phone straps; monitoring apparatus, electric; enlarging apparatus [photography]; filters [photography]; optical lenses; optical goods; telescopes; peepholes [magnifying lenses] for doors; batteries, electric; photocopiers [photographic, electrostatic, thermic]; optical apparatus and instruments; materials for electricity mains [wires, cables]; transparencies [photography]; regulating apparatus, electric; cases especially made for photographic apparatus and instruments; electric door bells; video screens; chips [integrated circuits].

2. European Union trade mark application No 14 350 904 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 350 904, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 6 193 569. 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

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

The contested goods are the following:

Class 9: Optical character readers; cell phone straps; monitoring apparatus, electric; enlarging apparatus [photography]; filters [photography]; optical lenses; optical goods; telescopes; peepholes [magnifying lenses] for doors; batteries, electric; photocopiers [photographic, electrostatic, thermic]; optical apparatus and instruments; materials for electricity mains [wires, cables]; transparencies [photography]; regulating apparatus, electric; cases especially made for photographic apparatus and instruments; electric door bells; video screens; chips [integrated circuits].

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 optical apparatus and instruments are identically included in both lists of goods.

The contested optical character readers; optical lenses; optical goods; telescopes; peepholes [magnifying lenses] for doors are included in the opponent’s optical apparatus and instruments. Therefore, they are identical.

The contested monitoring apparatus, electric overlaps with the opponent’s checking (supervision) apparatus and instruments. Consequently, they are deemed to be identical.

The contested enlarging apparatus [photography]; filters [photography]; transparencies [photography] are included in the broad category of the opponent’s photographic apparatus and instruments. Therefore, they are considered identical.

The contested batteries, electric; materials for electricity mains [wires, cables]; regulating apparatus, electric are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are considered identical.

The contested electric door bells are included in the broad category of the opponent’s signalling apparatus and instruments. Therefore, they are identical.

The contested video screens; photocopiers [photographic, electrostatic, thermic] are included in the broad category of the opponent’s apparatus for […] transmission or reproduction of sound or images. Consequently, they are identical.

The contested chips [integrated circuits] are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.

The contested cases especially made for photographic apparatus and instruments are similar to the opponent’s photographic apparatus and instruments given their complementary character as well as the fact that such goods stems from the same manufacturers, are distributed via the same channels to the same end user.

Cell phone straps in Class 9 are similar to hands free kits for phones, included in the broad category of apparatus for recording, transmission or reproduction of sound or images in Class 9, as they have the same purpose and nature. They can have the same producers, end users and 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 as well as business customers with specific professional knowledge or expertise. The degree of attention is considered to vary between average and above average, depending on the cost and the frequency of purchase of the relevant goods.

3. The signs

LIEKKI
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-Finnish-speaking part of the relevant public.

The earlier mark is a word mark, ‘LIEKKI’.

The contested sign is a figurative mark composed of the verbal element ‘LIEQI’ written in a standard black upper case typeface.

Neither the earlier mark nor the contested sign has any element that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

Visually, each of the signs is composed of one word of a similar length, six letters in the earlier mark and five in the contested sign. Moreover, they have in common the first three letters ‘LIE’ and the vowel ‘I’ in the final position. The first parts of the conflicting marks are identical. This is of particular importance, as consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The signs differ in the consonants ‘KK’ in the fourth and fifth positions in the earlier mark, as well as in the consonant ‘Q’ in the fourth position in the contested sign.

Moreover, although the contested sign is a figurative mark, its standard typeface is not considered to have a significant impact on the visual comparison of the signs.

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

Aurally, irrespective of the different pronunciation rules in the different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the sequence of letters ‘LIE*I’.

Moreover, the last syllable of the signs will be pronounced identically by a part of the relevant public, because the two consonants ‘K’ or the consonant ‘Q’ before the vowel ‘I’ result in the same phoneme, ‘/ki’, in several languages of the European Union, such as French, Spanish and Portuguese.

For the rest of the public, such as the English- and German-speaking parts of the public, the pronunciation of the letters ‘KK’ in the earlier mark and the letter ‘Q’ in the contested sign will differ slightly.

As a consequence, the signs are aurally identical for a part of the relevant public. For the rest of the public, the signs are aurally highly similar.

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

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 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

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 (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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).

The relevant public is the non-Finnish-speaking public, including average consumers and professionals, in the European Union. The degree of attention varies between average and above average.

The contested goods are identical or similar to the opponent’s goods.

The conflicting signs have strong visual and aural similarities, because they coincide in four out of the six letters of the earlier mark and the five letters of the contested sign, as they have the same first letters, ‘LIE’, and final letter, ‘I’. As seen above, the differing consonants in the middle of the signs have only a limited impact on the pronunciation of the signs, or no impact at all for a part of the relevant public. The figurative nature of the contested sign, as stated above, is not particularly striking. Therefore, the aforementioned differences are not sufficient to counteract the significant visual and aural similarities, or aural identity for part of the relevant public, between the signs.

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).

Moreover, it must be borne in mind that a heightened degree of attention does not automatically lead to a finding of no likelihood of confusion; all other factors have to be taken into account. When there is a strong likelihood of confusion created by other factors, such as a high degree of overall similarity between the marks and identity or similarity between the goods, the attention of the relevant public cannot be relied upon to prevent confusion (26/02/2010, R 1562/2008-2, VICTORY SLIMS, § 51).

Considering all the above, there is a likelihood of confusion on the part of the non-Finnish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 6 193 569. It follows that the contested trade mark must be rejected for all the contested goods.

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 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Loreto URRACA LUQUE

Steve HAUSER

Benoit VLEMINCQ

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.