OPPOSITION No B 2 969 650

Erco GmbH, Brockhauser Weg 80-82, 58507 Lüdenscheid, Germany (opponent), represented by Roche, von Westernhagen & Ehresmann, Friedrich-Engels-Allee 430-432, 42283 Wuppertal, Germany (professional representative)

a g a i n s t

Bing Li, 23 Brynawelon road, Cardiff, UK CF23 6QR, Cardiff, United Kingdom (applicant),

On 26/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 969 650 is partially upheld, namely for the following contested goods:

Class 11: Lighting and lighting reflectors; Aquarium lamps; Aquarium lights; Arc lamps; Arc lamps [lighting fixtures]; Architectural lighting fixtures; Architectural uplights for installation in the ground; Bases for non-electric lamps; Battery powered fluorescent emergency lighting units; Bases adapted for the mounting of lamps; Battery powered incandescent emergency lighting units; Bedside lamps; Book lights; Accent lights for indoor use; Braziers; Burners for lamps; Candle lamps; Candle lanterns; Carbon for arc lamps; Ceiling lights; Chandelier pendants; Chandeliers; Chemiluminescent light sticks; Decorative gas lighting sets; Decorative lighting for christmas trees; Decorative lighting sets; Decorative lights; Desk lamps; Diffusers being parts of lighting installations; Discharge lamps; Discharge tubes, electric, for lighting; Display lighting; Diving lights; Dome lights for furniture; Downlights; Electric night lights; Electric torches; Electric track lighting units; Electrical discharge lighting fixtures; Electrical lamps for indoor lighting; Electrical lamps for outdoor lighting; Electrical lighting fixtures; Electrical lighting fixtures for use in hazardous locations; Emergency lighting; Emergency lighting installations; Fairy lights for festive decoration; Fiber optic illuminators; Flaming torches; Flange light fittings; Flashlight bulbs; Flashlight pointers; Flashlights utilising electric rechargeable devices; Flat panel lighting apparatus; Flexible lamps; Floodlights; Floor lamps; Flourescent electric light bulbs; Fluorescent lamp tubes; Fluorescent lamps; Glow sticks; HID [high-intensity discharge] architectural lighting fixtures; Halogen architectural lighting fixtures; Halogen lamps; Halogen light bulbs; Halogen luminaires; Halogen stage lighting fixtures; Handheld spotlights; Hanging ceiling lamps; Hangings for lamps; Headlamp bulbs; Helmet lights; Indoor fluorescent lighting fixtures; Industrial lighting fixtures; Infrared lamps; Infrared lamps, not for medical purposes; Inspection lamps; Inspection lights; Installations for lighting christmas trees; Installations for street lighting; Japanese paper lanterns; Klieg lights; Laboratory lamps; Lamp bases; Lamps; Lamps fitted with extendible supports; Lamps for christmas trees; Lamps for electrical installations; Lamps for festive decoration; Lamps for outdoor use; Lamps for tents; Lampshade holders; Lanterns; Lanterns for lighting; Lanterns made of ceramics; Laser light projectors; Light diffusers; Light discharge tubes; Light projectors; Light sources [other than for photographic or medical use]; Light sources of electro luminescence; Light tubes being parts of insect killing apparatus; Light-emitting diodes [LED] lighting apparatus; Lighted disco balls; Lighting apparatus; Lighting apparatus and installations; Lighting apparatus incorporating optical fibers; Lighting armatures; Lights for gas-discharge lamps; Lights for music stands; Lights for track mounting; Lights, electric, for Christmas trees; Louvres for light control; Louvres for light deflection; Luminaires; Luminaires for security use; Luminous cables for lighting purposes; Luminous discharge lamps; Luminous house numbers; Luminous tubes for lighting; Opaque casings for lights; Organic light emitting diodes (OLED) lighting devices; Outdoor electrical lighting fixtures; Outdoor lighting; Pedestal lamps; Outdoor lighting fittings; Pendant fluorescent lighting fixtures; Penlights; Photocells (Security lighting operated by -); Plant grow lights; Portable hand lamps [for illumination]; Portable lamps [for illumination].

2. European Union trade mark application No 16 927 204 is rejected for all the above goods. It may proceed for the remaining goods.

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 some of the goods of European Union trade mark application No 16 927 204 KONO, namely against all the goods in Class 11. The opposition is based on European Union trade mark registration No 12 671 665, Kona. 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 11: Electric apparatus for lighting and parts therefor.

The contested goods are the following:

Class 11: Lighting and lighting reflectors; Aquarium lamps; Aquarium lights; Arc lamps; Arc lamps [lighting fixtures]; Architectural lighting fixtures; Architectural uplights for installation in the ground; Automatic flushing installations for urinals; Bases for non-electric lamps; Battery powered fluorescent emergency lighting units; Bases adapted for the mounting of lamps; Battery powered incandescent emergency lighting units; Bedside lamps; Bicycle reflectors; Book lights; Accent lights for indoor use; Braziers; Burners for lamps; Candle lamps; Candle lanterns; Carbon for arc lamps; Ceiling lights; Chandelier pendants; Chandeliers; Chemiluminescent light sticks; Decorative gas lighting sets; Decorative lighting for christmas trees; Decorative lighting sets; Decorative lights; Desk lamps; Diffusers being parts of lighting installations; Discharge lamps; Discharge tubes, electric, for lighting; Display lighting; Diving lights; Dome lights for furniture; Downlights; Electric night lights; Electric torches; Electric track lighting units; Electrical discharge lighting fixtures; Electrical lamps for indoor lighting; Electrical lamps for outdoor lighting; Electrical lighting fixtures; Electrical lighting fixtures for use in hazardous locations; Emergency lighting; Emergency lighting installations; Fairy lights for festive decoration; Fiber optic illuminators; Flaming torches; Flange light fittings; Flashlight bulbs; Flashlight pointers; Flashlights utilising electric rechargeable devices; Flat panel lighting apparatus; Flexible lamps; Floodlights; Floor lamps; Flourescent electric light bulbs; Fluorescent lamp tubes; Fluorescent lamps; Glow sticks; HID [high-intensity discharge] architectural lighting fixtures; Halogen architectural lighting fixtures; Halogen lamps; Halogen light bulbs; Halogen luminaires; Halogen stage lighting fixtures; Handheld spotlights; Hanging ceiling lamps; Hangings for lamps; Headlamp bulbs; Helmet lights; Indoor fluorescent lighting fixtures; Industrial lighting fixtures; Infrared lamps; Infrared lamps, not for medical purposes; Inspection lamps; Inspection lights; Installations for lighting christmas trees; Installations for street lighting; Japanese paper lanterns; Klieg lights; Laboratory lamps; Lamp bases; Lamps; Lamps fitted with extendible supports; Lamps for christmas trees; Lamps for electrical installations; Lamps for festive decoration; Lamps for outdoor use; Lamps for tents; Lampshade holders; Lanterns; Lanterns for lighting; Lanterns made of ceramics; Laser light projectors; Light diffusers; Light discharge tubes; Light projectors; Light sources [other than for photographic or medical use]; Light sources of electro luminescence; Light tubes being parts of insect killing apparatus; Light-emitting diodes [LED] lighting apparatus; Lighted disco balls; Lighting apparatus; Lighting apparatus and installations; Lighting apparatus incorporating optical fibers; Lighting armatures; Lights for gas-discharge lamps; Lights for music stands; Lights for track mounting; Lights, electric, for Christmas trees; Louvres for light control; Louvres for light deflection; Luminaires; Luminaires for security use; Luminous cables for lighting purposes; Luminous discharge lamps; Luminous house numbers; Luminous tubes for lighting; Opaque casings for lights; Organic light emitting diodes (OLED) lighting devices; Outdoor electrical lighting fixtures; Outdoor lighting; Pedestal lamps; Outdoor lighting fittings; Pendant fluorescent lighting fixtures; Penlights; Photocells (Security lighting operated by -); Plant grow lights; Portable hand lamps [for illumination]; Portable lamps [for illumination].

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 lighting and lighting reflectors; aquarium lamps; aquarium lights; arc lamps; arc lamps [lighting fixtures]; architectural lighting fixtures; architectural uplights for installation in the ground; battery powered fluorescent emergency lighting units; battery powered incandescent emergency lighting units; bedside lamps; book lights; accent lights for indoor use; braziers; burners for lamps; candle lamps; candle lanterns; carbon for arc lamps; ceiling lights; chandelier pendants; chandeliers; decorative gas lighting sets; decorative lighting for christmas trees; decorative lighting sets; decorative lights; desk lamps; diffusers being parts of lighting installations; discharge lamps; discharge tubes, electric, for lighting; display lighting; diving lights; dome lights for furniture; downlights; electric night lights; electric torches; electric track lighting units; electrical discharge lighting fixtures; electrical lamps for indoor lighting; electrical lamps for outdoor lighting; electrical lighting fixtures; electrical lighting fixtures for use in hazardous locations; emergency lighting; emergency lighting installations; fairy lights for festive decoration; flaming torches; flange light fittings; flashlight bulbs; flashlight pointers; flashlights utilising electric rechargeable devices; flat panel lighting apparatus; flexible lamps; floodlights; floor lamps; fluorescent electric light bulbs; fluorescent lamp tubes; fluorescent lamps; HID [high-intensity discharge] architectural lighting fixtures; Halogen architectural lighting fixtures; halogen lamps; halogen light bulbs; halogen luminaires; halogen stage lighting fixtures; handheld spotlights; hanging ceiling lamps; hangings for lamps; headlamp bulbs; helmet lights; indoor fluorescent lighting fixtures; industrial lighting fixtures; infrared lamps; infrared lamps, not for medical purposes; inspection lamps; inspection lights; installations for lighting christmas trees; installations for street lighting; japanese paper lanterns; klieg lights; laboratory lamps; lamps; lamps fitted with extendible supports; lamps for christmas trees; lamps for electrical installations; lamps for festive decoration; lamps for outdoor use; lamps for tents; lanterns; lanterns for lighting; lanterns made of ceramics; laser light projectors; light diffusers; light discharge tubes; light projectors; light sources [other than for photographic or medical use]; light sources of electro luminescence; light tubes being parts of insect killing apparatus; light-emitting diodes [LED] lighting apparatus; lighted disco balls; lighting apparatus; lighting apparatus and installations; lighting apparatus incorporating optical fibers; lighting armatures; lights for gas-discharge lamps; lights for music stands; lights for track mounting; lights, electric, for Christmas trees; louvres for light control; louvres for light deflection; luminaires; luminaires for security use; luminous cables for lighting purposes; luminous discharge lamps; luminous house numbers; luminous tubes for lighting; opaque casings for lights; organic light emitting diodes (OLED) lighting devices; outdoor electrical lighting fixtures; outdoor lighting; pedestal lamps; outdoor lighting fittings; pendant fluorescent lighting fixtures; penlights; photocells (security lighting operated by -); plant grow lights; portable hand lamps [for illumination]; portable lamps [for illumination] are all used in or for electric lighting. They are included in the broad category of, or overlap with the opponent´s electric apparatus for lighting and parts therefor. They are identical.

The contested chemiluminescent light sticks; glow sticks; fiber optic illuminators are highly similar to the opponent´s electric apparatus for lighting. Although powered differently, they coincide in their basic purpose to light or to facilitate lighting. They share the same nature to that extent, and may coincide in relevant public, distributors and, often, producers. Furthermore, they may be in competition.

The opponent´s parts thereof (referring to electric apparatus for lighting) include or overlap with the contested bases adapted for the mounting of lamps; lamp bases; lampshade holders. They are identical.

The contested bases for non-electric lamps are highly similar to the opponent´s parts thereof (referring to electric apparatus for lighting including lamps). The only difference is that the respective bases serve lamps or apparatus that are powered differently. They share the same nature, purpose, relevant public, distributors and, often, producers. Furthermore, they may be in competition.

The contested bicycle reflectors use a (prismatic) mirror system. Although their basic purpose is also to light or to facilitate lighting, they target different publics and will not be perceived as having the same commercial origin as the opponent´s goods. They are generally distributed in bicycle stores and don´t share producers. They are not in competition. They are dissimilar.

The contested automatic flushing installations for urinals are used in sanitation, not lighting. They are of a different nature and purpose to the opponent´s lighting apparatus, and parts thereof. They are produced by different entities and don´t share distributors or target the same public. They are not in competition nor complementary. They are dissimilar.

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 highly similar 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 to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

Kona	KONO
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 marks are meaningless in certain territories, for example in those countries where English is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Ireland, the United Kingdom and Malta.

Being word marks, there are no dominant elements and it is the word itself which is protected, not its written form. Neither mark has any meaning for the relevant public and will be perceived as fanciful. Both marks have normal distinctiveness in relation to the relevant goods.

Visually and aurally, the signs coincide in ‘KON_’. They differ only in their final letter, an ‘a’ in respect of the earlier mark, and an ‘o’ in the case of the contested sign, a broad vowel in both cases.

Therefore, the signs are 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.

According to the opponent, the earlier mark has been extensively used, While some turnover figures were mentioned, no evidence to prove its claim was submitted.

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

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), and that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The goods are identical, similar to a high degree and dissimilar. The signs are visually and aurally similar to a high degree, sharing three out of their four letters, and the earlier mark is distinctive.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the general 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 found to be identical or highly similar to those of the earlier trade mark, and that this pertains regardless of the level of attention displayed.

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) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

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

José Antonio GARRIDO OTAOLA

Keeva DOHERTY

Natascha GALPERIN

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.