OPPOSITION No B 3 031 856

Ledvance GmbH, Parkring 29-33, 85748 Garching bei München, Germany (opponent), represented by Prinz & Partner Mbb Patent- Und Rechtsanwälte, Rundfunkplatz 2, 80335 München, Germany (professional representative)

a g a i n s t

Ningbo GI Power Import & Export Co.,LTD, Room 1903-1, No.555 Rili Road, Yinzhou District, Ningbo City, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 30/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 031 856 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 No 17 387 523 ‘DEKO’, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 27 359 ‘DECOSTAR’. 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.

a) The goods

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

Class 9: Electrical apparatus and parts thereof.

Class 11: Lighting apparatus and parts thereof.

The contested goods are the following:

Class 9: Clothing for protection against accidents, irradiation and fire; asbestos gloves for protection against accidents; solderers' helmets; protective masks; fire resistant gloves; goggles; shoes for protection against accidents, irradiation and fire; protective helmets; respirators for filtering air; measures; range finders; levels [instruments for determining the horizontal]; anemometers; meters; measuring instruments; measuring devices, electric; tripods for cameras; exposure meters [light meters]; inductors [electricity]; portable media players.

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 opponent’s electrical apparatus and parts thereof in Class 9, when clearly not specified, can have different characteristics or different purposes, they may require very different levels of technical capabilities and know-how to be produced and/or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.

The term electrical apparatus and parts thereof in Class 9 can be generally defined as apparatus that work by means of electricity (and their parts), rather than using some other source of power. Consequently, although one can vaguely try to describe the meaning of the goods, in the present case their natural meaning cannot be sufficiently identified.

Due to the vagueness of the term electrical apparatus and parts thereof in Class 9, they cannot be construed as relating to the contested clothing for protection against accidents, irradiation and fire; asbestos gloves for protection against accidents; solderers' helmets; protective masks; fire resistant gloves; goggles; shoes for protection against accidents, irradiation and fire; protective helmets; respirators for filtering air; measures; range finders; levels [instruments for determining the horizontal]; anemometers; meters; measuring instruments; measuring devices, electric; tripods for cameras; exposure meters [light meters]; inductors [electricity]; portable media players since the purpose, qualities and methods of use of the opponent’s goods have not been expressly identified in the specification. In the absence of an express limitation clarifying the vague term electrical apparatus and parts thereof in Class 9, it cannot be identified if any of the abovementioned relevant factors relating to the comparison of the good would apply. As the natural meaning of electrical apparatus and parts thereof in Class 9 cannot be sufficiently identified, the contested goods and the opponent’s goods are considered not to be similar.

The opponent’s lighting apparatus and parts thereof in Class 11 can be generally defined as apparatus that supply artificial light (and their parts). These goods have nothing in common with the contested clothing for protection against accidents, irradiation and fire; asbestos gloves for protection against accidents; solderers' helmets; protective masks; fire resistant gloves; goggles; shoes for protection against accidents, irradiation and fire; protective helmets; respirators for filtering air, which are protective and safety clothes and equipment. The contested goods and the opponent’s goods have different natures, purposes and methods of use, are not manufactured by the same manufacturers, are usually distributed through different channels and do not target the same consumers. Moreover, they are neither complementary nor in competition. Therefore, they are dissimilar.

The opponent’s goods in Class 11 also differ from the contested measures; range finders; levels [instruments for determining the horizontal]; anemometers; meters; measuring instruments; measuring devices, electric; tripods for cameras; exposure meters [light meters]; inductors [electricity]; portable media players. The mere fact that some of the contested goods, for example, exposure meters [light meters] are used for measuring the amount of light falling on, or being reflected, is not sufficient for finding similarity between these goods. The opponent’s goods have a different nature and purpose, different manufacturers, relevant consumers and distribution channels and are neither complementary nor in competition with each other. Therefore, they are dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are not similar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Cynthia DEN DEKKER

Rasa BARAKAUSKIENE

Biruté SATAITE-GONZALEZ

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.