OPPOSITION No B 2 761 925

Cree, Inc.,4600 Silicon Drive, Durham, North Carolina 27703, United States of America (opponent), represented by Best Rechtsanwälte Partmbb, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Guangdong Cresheen Smart Home Co. Ltd., No. 22 Jianye Road,Huangpu Food Industrial Zone, Zhongshan, Guangdong, People’s Republic of China (applicant), represented by Teodoru I.P. SRL, 12 Nerva Traian Street Building M37, 1st Entrance,1st Floor, Suite 1, District 3, 031176 Bucharest, Romania (professional representative)

On 04/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 761 925 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 of European Union trade mark application ‘CRESHEEN’ No 15 457 609 namely against some of the goods in Class 11. The opposition is based on European Union trade mark registration ‘CREE’ No 9 564 477. The opponent invoked Article 8(1)(b).

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 11: Apparatus for lighting; light fixtures; flashlights; LED (light emitting diode) lighting fixtures; light bulbs; spotlights; incandescent burners.

The contested goods are the following:

Class 11: Lighting apparatus and installations; electric lamps; street lamps; standard lamps.

The contested lighting apparatus is identical to the opponent´s apparatus for lighting, since the same goods are referred to by using synonymous expressions. The contested lighting installations overlap with the opponent´s apparatus for lighting, and therefore these goods are identical.

The contested electric lamps; street lamps; standard lamps are included in the broad category of the opponent’s apparatus for lighting. Therefore, they are identical.

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 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 (e.g: standard lamps) to high
(e.g: street lamps), depending on the specialised nature of the goods, the frequency of purchase and/or their price.

3. The signs

CREE	CRESHEEN
Earlier trade mark	Contested sign

The relevant territory is 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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The opponent argues that ‘SHEEN’ in the contested sign means in English “a bright or shining condition” and will be perceived “as an attribute of the contested lamps and lighting apparatus and installations”. Therefore, it argues that “the consumers will focus on the ‘CRE’ portion of the mark as its distinctive element”.

The Opposition Division does not agree with this artificial division of the contested sign. Indeed, ‘CRE’ has no meaning for the relevant public regarding the goods involved. Therefore, there will be no mental dissection that could lead to identifying the sequence of letters “SHEEN” as an independent element. Consumers will consider ‘CRESHEEN’ as one single invented term and therefore, “CRESHEEN” as of average distinctive character.

The earlier mark has a meaning for the French-speaking part of the public for whom it is an adjective meaning ‘created’ as well as for the Spanish-speaking part of the public as the command “believe!” (the imperative of the verb ‘creer’). For the rest of the relevant public, this element is meaningless and is therefore distinctive.

Visually, the signs coincide in their three first letters ‘CRE’ (CREE vs CRESHEEN). It is true that consumers generally tend to focus on the beginning 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.

However, it also must be recalled that, although the beginning of a sign generally has more importance than the ending in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (see judgment of 27/06/2012, T-344/09, ‘Cosmobelleza’, paragraph 52).

The signs differ in the additional ‘E’ at the end of the earlier sign and in ‘SHEEN’ at the end of the contested sign. Consequently, the signs also differ in length, namely four letters forming the earlier mark and eight forming the contested sign. Therefore, the signs are 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 coincides in the sound of the letters ‛CRE’, present identically in both signs. The pronunciation differs in the sound of the last letter ‛E’ of the earlier sign and the letters ‘SHEEN’ of the contested mark.

It has to be noted that in most languages of the relevant territory, e.g. German or English, the signs differ in the number of their syllables, since the earlier mark will be perceived as consisting of one syllable (/cree/) whereas the contested sign is formed by two (/cre/sheen/), leading to a distinct rhythm and intonation. However, in some languages the earlier mark will be pronounced in a disyllabic manner, too, e.g. in Spanish (/cre/e/); nevertheless, the signs maintain different intonation, based on their different endings (i.e. consisting of a double vowel (EE) in the earlier mark and a consonant-vowel combination (EEN) in the contested sign).

Conceptually, a part of the public will perceive the meaning of the earlier mark but the other sign has no meaning in those territories. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the rest of the public, neither sign conveys any meaning. 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.

According to the opponent the earlier trade mark is well known and enjoys a high degree of distinctiveness as result of its long standing and intensive use in the European Union in connection with the goods on which the opposition is based, namely Apparatus for lighting; light fixtures; flashlights; LED (light emitting diode) lighting fixtures; light bulbs; spotlights; incandescent burners.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Appendix 1: A printout from the opponent’s European website (www.cree-europe.com)

• Appendix 2: A list of the global sales network for CREE products and services.

• Appendix 3: A printout from the website of one Dutch distributor of the CREE products. (http://avalite.nl/producten)

• Appendix 4: The worldwide registrations of the trade mark “CREE”.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

The evidence filed by the opponent demonstrates some use of the earlier mark. However, it fails to establish that the earlier mark has achieved an enhanced degree of distinctiveness. The documentation consists of information concerning the company, its activities and where its lighting products can be purchased (annexes 1-2) as well as information from a distributor also on products available.

However, none of this documentation sheds any light on the degree of recognition of the mark for the relevant goods. There is an absence of information concerning sales revenue or advertising expenditure so it cannot be deduced whether or not there is a degree of knowledge concerning the mark due to intense use for example. Even Annex 4 is of little relevance in this regard. Firstly, the list only consists of EUTM registrations and as such is not ‘worldwide’. Secondly, though trade mark registrations in different territories attest, to a certain extent, that the goods are circulated therein, there is no information on the circumstances in which the marks were registered and whether or not they are really used and to what extent. Thirdly, it is clear that registrations such as these do not demonstrate any kind of recognition that would lead to any kind of enhanced distinctive character. Indeed, in its totality the evidence contains not information on the awareness of the mark.

In the absence of any substantial evidence regarding commercial volumes and consumer recognition in the relevant territory, such as independent consumer surveys, proof of market share, etc., it clearly fails to unequivocally prove that the mark has acquired a high degree of distinctiveness.

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

The signs have been found visually and aurally similar to a low degree. However, they are either not similar from a conceptual point of view or they lack any meaning.

This is due to the fact that the signs only coincide in three letters. The earlier mark is a relatively short mark consisting of only four letters; the fact that the signs differ in one and five letters respectively is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. The length of the signs may influence the effect of the differences between them.

Also, the fact that both signs share a double ‘EE’ as mentioned by the opponent is irrelevant since these letters appear in different positions in the signs and since there are additional elements which are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks.

The opponent refers to various judgments of the General Court and of this Office, in order to base its arguments (i.e. regarding the scenario in which one trade mark is comprised in the other, and for referring to the relevance of a differing element when this element is considered descriptive).

For example the opponent refers to cases such as Harman International Industries v OHMI - Becker (Barbara Becker) (02/12/2008, T-212/07 EU:T:2008:544), 11/06/2014, T-62/13 EU:T:2014:436 - Golam v OHMI - Glaxo Group (METABIOMAX); 18/02/2004, T-10/03 EU:T:2004:46 Koubi v OHMI - Flabesa (CONFORFLEX)  ; T-164/03 EU:T:2005:140 Ampafrance v OHMI - Johnson & Johnson (monBeBé)).

In the present case, the previous cases referred to by the opponent are not relevant to the proceedings.

Indeed, the trade marks at stake were different and the earlier trade marks were included exactly in the contested signs. This led to visual and aural similarities or strong conceptual similarities which are not present in the actual proceedings. Moreover, as already stated above, the consumer will not dissect the contested sign and see a descriptive element. In the present proceedings, the trademarks are similar to only a low degree since they share three letters and the earlier mark ‘CREE’ is not completely included in the younger sign contrary to what the opponent claims.

Since the scenarios to which those cases refer are not comparable to the case at hand, the same approach cannot be expected to be followed.

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

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, it 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

María del Carmen SUCH SANCHEZ

Lucinda CARNEY

Vanessa PAGE

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.