OPPOSITION No B 2 932 344

José Ramón Ortiz de Zarate Ramirez, Larrondo Beheko 5, Pabellón 16-17, 48014, Loiu/Bizkaia, Spain (opponent), represented by Ipamark S.L., Paseo de la Castellana, 72-1º, 28046, Madrid, Spain (professional representative)

a g a i n s t

Easyacc Technology Co., Limited, Unit 2508A, 25/F, Bank of America, Tower 12 Harcourt Rd, Central Hong Kong (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center VERTAS Gynéjų str. 16, 01109, Vilnius, Lithuania (professional representative).

On 26/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 932 344 is partially upheld, namely for the following contested goods:

Class 11: Lamps; electric lamps; ceiling lights; lighting apparatus and installations; spotlights; lights for vehicles; light bulbs; cooking apparatus and installations; cooling appliances and installations; air-conditioning apparatus; disinfectant apparatus; wall lights; electric lights for Christmas trees.

2. European Union trade mark application No 16 619 116 is rejected for the above goods. It may proceed for the remaining goods, namely acetylene flares.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 619 116 .

The opposition is based on European Union trade mark registration No 16 323 826 and Spanish trade mark registration No 2 636 260

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 16 323 826.

1. The goods

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

Class 9: Scientific apparatus and instruments; nautical apparatus and instruments; surveying apparatus and instruments; photographic apparatus and instruments; cinematographic machines and apparatus; optical apparatus and instruments; weighing apparatus and instruments; measuring apparatus; signalling apparatus; life-saving apparatus and instruments; apparatus and instruments for accumulating and storing electricity; apparatus and instruments for controlling electricity; photovoltaic apparatus for electricity generation; electric and electronic components; apparatus, instruments and cables for electricity; apparatus and instruments for transforming electricity; apparatus and instruments for controlling electricity; apparatus for recording sound; apparatus for recording images; apparatus for the transmission of sound; apparatus for the transmission of images; apparatus for the reproduction of images; apparatus for the reproduction of sound; magnetic data carriers; recording discs; compact discs; DVDs; digital recording media; mechanisms for coin-operated apparatus; cash registers; calculators; data processing equipment; computers; computer software; fire-extinguishing apparatus.

Class 11: Electric lamps; apparatus for heating; steam generating apparatus; cooking apparatus and installations; refrigerating appliances and installations; drying apparatus and installations; ventilation [air-conditioning] installations and apparatus; sanitary installations.

The contested goods are the following:

Class 11: Lamps; electric lamps; ceiling lights; lighting apparatus and installations; spotlights; lights for vehicles; light bulbs; cooking apparatus and installations; cooling appliances and installations; air-conditioning apparatus; disinfectant apparatus; wall lights; electric lights for Christmas trees; acetylene flares.

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.

Electric lamps; cooking apparatus and installations; air-conditioning apparatus are identically included in both lists of goods.

The contested lamps; ceiling lights; lighting apparatus and installations; spotlights; lights for vehicles; light bulbs; wall lights; electric lights for Christmas trees are all lighting goods using electricity. As such, they either overlap with or are contained in the opponent’s electric lamps. Therefore, these goods are identical.

It is to be noted that air conditioning can refer to cooling, heating, ventilating, disinfecting or in any other way modifying the condition of air in buildings or equipment. Consequently, the contested cooling appliances and installations; disinfectant apparatus are contained in or overlap with the opponent’s air-conditioning apparatus. Therefore, these goods are identical

The contested acetylene flares are devices that produce a brilliant light without explosion. While the opponent’s electric lamps are also used to provide light, the similarities between these goods and all those covered by the earlier right end there since their method of use, distribution channels, manufacturers and customers are completely different. Furthermore, they are neither in competition nor complementary to one another, and the opponent has not adduced any evidence or argumentation as to why these particular goods would be similar. Therefore, these contested goods are dissimilar to the opponent’s goods both in Classes 11 and 9.

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 both at the public at large and the professional public given that some of the goods can be used for industrial purposes.

The degree of attention is considered to vary from average to high in relation to goods used for industrial purposes in which case the relevant goods may be of higher price and/or their proper functioning may affect the running of a business.

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.

The common element ‘BRIGHT’ is understood in the English-speaking part of the relevant territory as ‘full of light; shining’. Since a significant part of the goods are related to lighting, this word is non-distinctive as it merely describes one of their characteristics or intended purposes. Therefore the similarities between the signs would be lowered. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as Spain.

The earlier mark consists of the letters ‘F BRIGHT’ in blue italics, with double underlining and divided by a dot. On top of the letter ‘F’ there is a device resembling a lightning bolt. The verbal part of the sign lacks any meaning in the relevant territory and is, therefore, distinctive while the device is often used in the context of electricity or electric products, which makes its distinctiveness very low. Furthermore, the mark is visually dominated by the verbal elements given their size and position.

The contested sign, albeit applied for as figurative, consists of one word ‘Ubright’ in simple typeface, without any additional feature of note. Since this word lacks any meaning, it has average distinctiveness in relation to the goods.

Visually, the signs coincide in six out of their seven letters, in different fonts and colour but in an identical order. In addition, they differ in their initial letters ‘F’ and ‘U’ and in the earlier mark’s device of low distinctiveness. Considering also that verbal components tend to have a stronger impact on consumer perception than figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37), it must be concluded that the signs’ different initial letters and additional differences of a mostly decorative nature cannot counteract the coincidence in a very large part of their verbal elements. Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BRIGHT’ present identically in both signs, and differs in their initial letters. This one-letter difference has a certain impact on their pronunciation given the aural difference between ‘F’ and ‘U’, however, this in itself is not sufficient to offset the coincidence in the six letters following them. Therefore, the signs are highly similar.

Conceptually, the signs’ verbal elements have no meaning for the public in the relevant territory while the earlier mark’s device refers to a very weak concept in the context of the relevant goods and cannot, thus, play a differentiating role. Consequently, no conceptual comparison is possible and 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, despite the presence of a weak figurative element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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).

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods are partly identical and partly dissimilar. The signs are visually similar to an average degree and aurally to a high degree while the conceptual aspect plays no role. The coincidence in six out of their seven letters is offset neither by their differing initial letters nor by the additional, weak or mere decorative, features.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion in Spain and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration 16 323 826. 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 found to be identical to those of the earlier trade mark.

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

The opponent has also based its opposition on Spanish trade mark registration No 2 636 260 for ‘lamps, bulbs’. As can be seen, these goods are de facto identically protected by the opponent’s other mark already examined. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Vanessa PAGE

Ferenc GAZDA

Rasa BARAKAUSKIENE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.