OPPOSITION No B 3 050 887

Lorefar S.L., Calle Dinámica, 1 Polígono Industrial Santa Rita, 08755 Castellbisbal (Barcelona), Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative)

a g a i n s t

Greenlux Sp. Z O.O., Powodowo 52, 64200 Wolsztyn, Poland (applicant), represented by Biuro Doradztwa Technicznego I Usług Patentowych Plik S.C., ul. Grażyńskiego 15A/42, 40-126 Katowice, Poland (professional representative)

On 08/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 887 is partially upheld, namely for the following contested goods:

Class 11: Electrical apparatus for lighting; lighting installations; incandescent light bulbs; lamps; light modules; luminaires; fixtures and parts for lamps and light bulbs; flashlights torches; electrically powered fans for ventilation purposes; ventilation [air-conditioning] apparatus for heating.

2. European Union trade mark application No 17 308 511 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 308 511 (figurative), namely part of the goods in Class 9 and all the goods in Class 11.

The opposition is based on European Union trade mark registration No 15 355 175 (figurative). 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: Apparatus for lighting, refrigerating and ventilating; material of all kinds for electrical lighting installations, in particular electric filament lamps; all the aforesaid not including specialised professional apparatus for lighting in hospitals, medical clinics, test laboratories, mechanical and electronic industries, chiropody clinics and beauty centres, dental apparatus, lamps for dentistry and dental laboratories, polymerisation lamps, apparatus for heating and steam generating purposes used in dentistry, autoclaves for the sterilising of instruments and articles and materials used in orthodontics.

The contested goods are, further to the partial rejection of the contested sign in the final decision in parallel opposition No B 3 051 153, the following:

Class 9: Signalling apparatus; light analysers, detectors and sensors; home automation apparatus comprising controllers for ventilating and lighting apparatus; protection, lightning protection, security and voltage protection apparatus; cable trays; fuse holders; radiation tubes; ducts [electricity]; cable channels (electric -); junction boxes; ballasts and electrical and power fixtures for luminaires; light-emitting diodes (LEDs).

Class 11: Electrical apparatus for lighting; lighting installations; incandescent light bulbs; lamps; light modules; luminaires; fixtures and parts for lamps and light bulbs; flashlights torches; electrically powered fans for ventilation purposes; ventilation [air-conditioning] apparatus for heating.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent´s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 goods in this class (listed above) consist mainly of apparatus meant to analyse and/or control various things (e.g. ventilation, light, etc.) and of goods meant to be used as part of complex installations/devices. The opponent´s goods in Class 11 consist mainly of apparatus for lighting, refrigerating and ventilating, affected by various limitations as regards their method of use or purpose.

The contested goods in this class are all dissimilar to the opponent´s goods, since they differ in nature, purpose, method of use and distribution channels/points of sale. They are neither complementary nor in competition, are not directed at the same consumers and do not usually originate from the same kind of undertakings.

Contested goods in Class 11

The contested Electrical apparatus for lighting; lighting installations; incandescent light bulbs; lamps; light modules; luminaires; flashlights torches are identical to the opponent’s Apparatus for lighting; all the aforesaid not including specialised professional apparatus for lighting in hospitals, medical clinics, test laboratories, mechanical and electronic industries, chiropody clinics and beauty centres, dental apparatus, lamps for dentistry and dental laboratories, polymerisation lamps, apparatus for heating and steam generating purposes used in dentistry, autoclaves for the sterilising of instruments and articles and materials used in orthodontics, because they overlap with the contested goods.

The contested fixtures and parts for lamps and light bulbs overlap with the opponent´s material of all kinds for electrical lighting installations, in particular electric filament lamps; all the aforesaid not including specialised professional apparatus for lighting in hospitals, medical clinics, test laboratories, mechanical and electronic industries, chiropody clinics and beauty centres, dental apparatus, lamps for dentistry and dental laboratories, polymerisation lamps, apparatus for heating and steam generating purposes used in dentistry, autoclaves for the sterilising of instruments and articles and materials used in orthodontics. They are therefore identical.

The contested electrically powered fans for ventilation purposes; ventilation [air-conditioning] apparatus for heating are identical to the opponent´s apparatus for ventilating; all the aforesaid not including specialised professional apparatus for lighting in hospitals, medical clinics, test laboratories, mechanical and electronic industries, chiropody clinics and beauty centres, dental apparatus, lamps for dentistry and dental laboratories, polymerisation lamps, apparatus for heating and steam generating purposes used in dentistry, autoclaves for the sterilising of instruments and articles and materials used in orthodontics because they overlap.

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 in part at the public at large (e.g. lamps) and in part at professionals (e.g. lighting installations)

The degree of attention during the purchase of these goods is deemed to vary from average to higher than average. A higher than average degree of attention could be paid in relation to, for instance, goods in relation to which professional knowledge/expertise is needed in order for them to be properly used and/or that can have consequences for the safety of the users.

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 word ‘FARO’ is the Italian and Spanish word for ‘lighthouse’. The differing word ‘Form’ is a basic English word meaning, inter alia, ‘shape’. It is likely to be understood by Italian- and Spanish-speaking consumers, either because they have sufficient knowledge of English to understand this basic word, or because it is so similar in spelling to its Italian and Spanish equivalent ‘forma’ that the same concept will be brought to mind. The Opposition Division finds it appropriate to focus the comparison of the signs on the Italian- and Spanish-speaking parts of the public, for whom the signs bear conceptual similarities in relation to ‘Faro’ that may not occur to other consumers.

Consumers will perceive the contested mark as formed by two independent but linked terms, namely ‘Faro’ and ‘Form’. The reason for this is that they will attribute the concepts described above to at least one of these terms and this, together with the different typeface in each of these elements, will contribute to the mental dissection of the mark as explained.

Bearing in mind the relevant goods, it is considered that both ‘FARO’ (in both signs) and ‘FORM’ (in the contested sign) are distinctive to an average degree, since they are neither descriptive nor allusive of the kind of goods involved. Therefore, the contested sign has no element more distinctive than others.

The word ‘BARCELONA’ (in the earlier mark) is a Spanish city. Even if it is not particularly known for the manufacture of the goods covered by the earlier mark, it can be seen as a reference to the place where they are, for instance, designed/sold/produced. Therefore, it is of lower than average distinctive character, with the most distinctive element in the earlier mark being the term ‘FARO’.

The contested sign has no element that is more dominant (visually eye-catching) than others. Nevertheless, the word ‘Faro’ stands out to a certain extent for being in bold letters, and the element ‘Form’ in a lighter font.

The earlier mark is formed by the element ‘FARO’, which is the dominant element due to its bigger size and bold typeface, and the fact that it is positioned in the upper part of the mark, and by the less eye-catching verbal element ‘BARCELONA’, much smaller and below the verbal element ‘FARO’. For these reasons, ‘BARCELONA’ will have a reduced impact. Lastly, the first letter of the contested sign is slightly stylised (i.e. a part of the letter is missing and another part of it is depicted in red), and the sign perceived as a whole is written in a rather standard typeface. The slight stylisation of the letter ‘F’ is of minor visual impact.

Since the public reads from left to right and from top to bottom, the part placed at the left/top of the sign (the initial part) is the one that first catches the attention of the reader. It is therefore relevant to note that, despite the different position of the elements forming the marks, in both of them the first elements to be seen and pronounced will be the coinciding word ‘Faro’.

Visually, the signs coincide in the word ‘Faro’ and differ in the rest of the elements forming them, as described above. The coinciding verbal element has a greater weight/impact in both marks, for the reasons explained above, namely that it is distinctive/the most distinctive element in the marks, it is the dominant element of the earlier mark and has a greater visual impact in the contested sign and it is also the first element seen in both signs. Likewise, the differing elements have less visual impact, are read in the last place and/or have a lower than average distinctive character.

Taking into account all of the above, it is considered that the marks are visually similar to an average degree.

Aurally, the signs coincide in the sound of ‘Faro’ and differ in the sound of ‘BARCELONA’ and of ‘Form’. Taking into account the impact caused by each of these elements, as explained above, it is considered that the marks are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as having the concept of ‘Faro’ (i.e. ‘lighthouse’ in Spanish and Italian), while they differ in the concepts of ‘Barcelona’ (of lower than average distinctive character) and of ‘Form’ (perceived as having the concept of the Spanish and Italian word ‘forma’) it is considered that the marks are conceptually similar to an average degree.

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 the word ‘BARCELONA’ which can be seen as allusive to the characteristics of the goods, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods compared are partly identical and partly dissimilar. The ones found to be identical are directed in part at the public at large and in part at professionals, and the degree of attention paid by them during the purchase will vary from average to higher than average.

The signs are visually, aurally and conceptually similar to an average degree. They coincide in the elements which have a greater impact, and differ in those with less/reduced impact, for the various reasons explained in section c) above.

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).

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. Indeed, in this case it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). This is likely to be the case also for the part of the public paying a higher than average degree of attention.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, since they involve totally different scenarios (i.e. signs and/or goods or services that are different from the ones herein involved). Therefore, the same reasoning cannot be expected to be followed or the same outcome reached.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical.

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

Inés GARCÍA LLEDO

María del Carmen SUCH SANCHEZ

Helen Louise MOSBACK

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.