OPPOSITION No B 3 042 960

Lightware Visual Engineering LLC, Peterdy utca 15., 1071 Budapest, Hungary (opponent), represented by Szabo, Kelemen és Társai Ügyvédi Iroda, Lövőház u. 39., 1024 Budapest, Hungary (professional representative)

a g a i n s t

Lightware, Inc., 35 Laurel Street, 01742 Concord, United States of America (applicant), represented by Tomkins & Co., 5 Dartmouth Road, 6 Dublin, Ireland (professional representative).

On 18/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 042 960 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 351 404 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 351 404 for the word mark ‘LIGHTWARE’, namely against all the goods and services in Classes 9 and 42. The opposition is based on, inter alia, Hungarian trade mark registration No 210 215 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR in relation to this earlier mark and Article 8(1)(a) and/or (b) EUTMR in relation to further earlier marks.

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 several earlier Hungarian trade marks and on a German trade mark. The Office issued several letters to the opponent in relation to admissibility deficiencies and lack of substantiation of the invoked earlier rights.

The Opposition Division deems it appropriate to clarify that the opponent indicated in the notice of opposition with respect to each of the earlier rights that it accepts that the necessary information for the respective trade marks is imported from the relevant online official database, accessible through TMview (Article 7(3) EUTMDR).

For the purposes of assessing the admissibility of the opposition the Office must base itself solely on the claims contained in the documents submitted by the opponent within the opposition period (decision of 21/07/2014, R 1573/2013-4, OKAY/O-Key (fig.)). However, identification elements are to be looked for not only in the notice of opposition, but also in annexes or other documents filed together with the opposition or any documents submitted within the opposition period, including in the information available in the relevant online official databases referred to by the opponent.

The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Hungarian trade mark registration No 210 215 (application No M1 204 348) for the figurative mark .

In relation to this earlier mark it is indicated in the notice of opposition that the owner of the earlier mark is the company Lightware Vetítéstechnikai Kft. (translated into the language of the proceedings as Lightware Visual Engineering LLC, as evident from the documents attached to the notice of opposition, in particular bilingual power of attorney). Moreover, according to the notice of opposition, as regards this earlier mark the opposition is based on all goods and services covered by the said mark.

The Office indicated in its letter of 03/12/2018 that ‘the indicated goods on which the opposition is based are the goods of the challenged trade mark and not those of the earlier rights basis’. However, the opponent attached to the notice of opposition extracts from the Hungarian database as regards the earlier Hungarian trade marks invoked and, furthermore, the databases of the Hungarian Intellectual Property Office accessed by the Opposition Division pursuant to Article 7(3) EUTMDR include all the details with respect to the earlier Hungarian trade marks not only in Hungarian but also in English (i.e. in the language of the proceedings).

Therefore, the Opposition Division considers the insertion in the notice of opposition of the contested goods and services instead of those on which the opposition is based to constitute an obvious mistake and that the list of goods to be taken into account as regards Hungarian trade mark registration No 210 215 (application No M1 204 348) to be the one available in the online source referred to by the opponent (both in Hungarian and in English).

Consequently, at least with respect to earlier Hungarian trade mark registration No 210 215 (application No M1 204 348) the Opposition Division considers that the opposition is admissible and also that there is sufficient evidence (on file and/or available in an online official database, accessible through TMview, Article 7(3) EUTMDR) to prove the existence, validity and scope of protection of the earlier mark as well as the entitlement of the opponent to file the opposition.

a) The goods and services

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

Class 9: Transmitters of electronic signals; testing apparatus not for medical purposes; amplifiers; sound transmitting apparatus; sound recording apparatus; sound recording apparatus; interfaces (for computers); switches, electric; switchboards; downloadable image files; monitors (computer hardware); high-frequency apparatus; printed circuit boards; computer operating programs, recorded; processors (central processing units); computers; computer game programs; computer peripheral devices; voltage surge protectors; telerupters; projection apparatus; audio and video receivers; camcorders; video screens; video telephones; anti-interface devices (electricity); image and sound transmitting devices; image and sound signal switching device (electronics).

The contested goods and services are the following:

Class 9: Computer software and hardware for enabling users to view, monitor, program, operate and control large and small appliances, electrical systems and security systems in homes, offices and vehicles, and for use in connection with the Internet of things; Computer software for enabling users to view, monitor, program, operate and control large and small appliances, electrical systems and security systems in homes, offices and vehicles, and for use in connection with the Internet of things that may be downloaded from a global computer network.

Class 42: Cloud computing featuring software for use enabling users to view, monitor, program, operate and control large and small appliances, electrical systems and security systems in homes, offices and vehicles, and for use in connection with the Internet of things; Installation, maintenance, and updating of computer software; Platform as a service (PAAS) featuring computer software platforms for enabling users to view, monitor, program, operate and control large and small appliances, electrical systems and security systems in homes, offices and vehicles, and for use in connection with the Internet of things; Providing a website featuring technology enabling users to remotely view, monitor, program, operate and control large and small appliances, electrical systems and security systems in homes, offices and vehicles; Software as a service (SAAS) services featuring software for enabling users to view, monitor, program, operate and control large and small appliances, electrical systems and security systems in homes, offices and vehicles, and for use in connection with the Internet of things.

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 computer software for enabling users to view, monitor, program, operate and control large and small appliances, electrical systems and security systems in homes, offices and vehicles, and for use in connection with the Internet of things overlaps with and is identical to the opponent´s computer operating programs, recorded.

The contested computer hardware for enabling users to view, monitor, program, operate and control large and small appliances, electrical systems and security systems in homes, offices and vehicles, and for use in connection with the Internet of things overlaps with and is identical to the opponent´s computers.

The contested computer software for enabling users to view, monitor, program, operate and control large and small appliances, electrical systems and security systems in homes, offices and vehicles, and for use in connection with the Internet of things that may be downloaded from a global computer network and the opponent´s computer operating programs, recorded are both computer programs, software, although the contested goods are downloadable and limited to software with specific functionalities whereas the opponent´s goods are recorded. While the conflicting goods are not identical because of the aforementioned difference (downloadable vs recorded), they coincide in their nature, general purpose, distribution channels, public, providers and method of use and are deemed to be highly similar.

Contested services in Class 42

The contested services are IT-related services, i.e. cloud computing services, software or platform as a service or providing a website enabling users to access and control certain appliances, devices, systems, etc., installation, maintenance and update of software. All these services are similar to the opponent´s computer operating programs, recorded because the goods and services at issue target the same public through the same distribution channels, and may come from the same companies. Moreover, some of the contested services (SAAS, PAAS, etc. which refer to a model for the distribution of software where customers access software over the Internet) are in competition with the opponent´s goods.

b) 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 opponent´s goods are directed at the public at large and at professionals whereas the contested goods and services, considering their specific aim and functionalities, target mainly the public at large. Given also that the general public is more prone to confusion, the examination will proceed on this basis.

The degree of attention may vary from average to higher than average, depending on the price, sophistication, or terms and conditions of the goods and services purchased.

c) The signs

	LIGHTWARE
Earlier trade mark	Contested sign

The relevant territory is Hungary.

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 only element of the contested sign which is included also in the earlier mark as its dominant element (on account of its size and position) will not be associated with a meaning by the relevant public and is normally distinctive.

It may not be excluded that the further verbal elements present in the earlier mark - ‘visual engineering’ – may be understood by a part of the relevant public and will be seen in such case as a general reference to engineering services or products featuring visual technology or representations and for this part of the public the distinctiveness of these elements will be limited. A part of the relevant public may understand only the element ‘visual’ (due to the proximity of the Hungarian word ‘vizuális’) and it may be that a part of the public will not perceive a meaning in these words. However, even in the latter case where these elements of the earlier mark will be seen as normally distinctive, they will be secondary in the overall impression on account of their size and representation in thin, lower case letters in a lighter colour. The underlining of the earlier mark is of purely decorative nature and will not be attributed any trade mark significance.

Visually, the contested sign is entirely included in the earlier mark as its dominant element. The signs differ in the additional elements of the earlier mark which will be, however, attributed less significance than the element where the coincidences lie.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‛LIGHTWARE’, present identically in both signs. The pronunciation differs in the sound of the words ‛visual engineering’ of the earlier mark, which have no counterparts in the contested sign but which are, as explained above, secondary in the overall impression of the earlier mark. Moreover, it is likely that a part of the public will not pronounce the latter words since consumers tend to shorten signs and only refer to the dominant elements in the trade mark (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, §43-44; 02/02/2011, T-437/09, Oyster cosmetics, EU:T:2011:23, § 44; 31/01/2012, T-205/10, La victoria de Mexico, EU T:2012:36, § 69).

Consequently, the signs are similar to at least an average degree, if not even identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The contested sign will not be associated with a meaning so that, for the part of the public which would associate the elements ‛visual engineering’ of the earlier mark with a meaning, the signs are conceptually not similar. For the remaining part of the public, neither of the signs has a meaning, a conceptual comparison is not 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.

d) 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.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, §22).

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 contested goods and services were found to be identical or similar (to different degrees) to the opponent’s goods. The inherent distinctiveness of the earlier mark is normal.

The conflicting signs were considered to be visually highly similar and aurally similar to at least an average degree (if not even identical). For a part of the public, the conceptual aspect of the comparison remains neutral. The differences (including from a conceptual point of view, for a part of the public) are limited to elements that are secondary in the overall impression of the earlier mark.

The entire contested sign is contained in the earlier mark as a distinctive and its dominant element. The additional secondary or non-distinctive elements of the earlier mark are not sufficient to dispel a likelihood of confusion.

Given the degree of similarity found between the marks, the fact that the degree of attention of the relevant public could be heightened is not sufficient to exclude the possibility that the public might believe that the goods and services in question come from the same undertaking or, as the case may be, from economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Hungarian trade mark registration No 210 215. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier Hungarian trade mark registration No 210 215 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(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

Lidiya NIKOLOVA

Denitza STOYANOVA-VALCHANOVA

Marta Maria CHYLIŃSKA

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.